Trademarks: Intellectual Reserve v. Sintes

It looked like an unequal match: a sixty year old sole litigant arguing his own case in the Court of Appeal against the moneyed might of the Mormon Church.  But the Mormon Church failed in its attempt to block trademark registration for a logo phrased as “familysearch” designed to complement the litigant’s domain name: familysearch.co.nz.

The Church already holds trademark registration for the words “family search” under headings tied to geneaology. While approved, the logo’s registration was tagged to make it clear that others could still use the phrase “family search” and not be in breach of the trademark.

The Utah based church has an extensive archive with biographical details for over 400 million people.  The archive was established to assist in tracing the ancestors of current adherents.  The Mormon Church allows ancestors to be posthumously received into the faith.  This archive is commercially valuable.  Non-Mormons use the database to search their own family trees.

In New Zealand, a Mr Robert Sintes set up a web-based operation called New Zealand Family Tracing Service in 2000 to help individuals trace relatives spread around the world.

Initially the Church challenged use of his domain name, familysearch.co.nz.  The court was told this action had been discontinued.  It also challenged trademark registration arguing that the proposed logo was not “distinctive” as required by trademark legislation and that it would cause confusion.

Trademarks are not permitted where they are not distinctive to the owner’s goods or services and instead seek to appropriate some common word in the English language and stop others from using it in business; such as the names of towns or regions, or laudatory words like better or best.

The court expressed surprise that the Mormon Church had already obtained trademark rights in the words: family search.  These words are not distinctive to the Church’s religious interest in geneaology and are precisely the words any person would use when searching their family tree.

There was evidence that the words “family” and “search” are in the top two per cent of the most commonly used words in the English language.

The fact that Mr Sintes did not use these words alone, but instead surrounded the words with embellishments in the form of his logo meant that the logo in its entirety was distinctive.  Registration was permitted with the caveat that this did not stop others using the same words.

Intellectual Reserve v. Sintes – Court of Appeal (16.7.09)

08.09.004