First use of a brand name creates priority rights for later trademark registration with Australian fire safety supplier Trafalgar Group failing in its High Court argument that an employee’s LinkedIn post referencing its product amounted to ‘first use’ in New Zealand, trumping an email exchange between its Australian competitor Boss Fire & Safety and a New Zealand customer.
Trademarks have considerable commercial value. In Australia, Trafalgar Group and Boss Fire & Safety have kept their respective legal advisers profitably employed arguing over right to use two brand names: Firebox and Fyrebox.
These monikers are used to promote cable duct boxes within buildings designed to self-seal in cases of fire, reducing the spread of fire between rooms and apartments.
In Australia, Boss Fire & Safety trounced Trafalgar Group in court battles over the right to use Fyrebox and Firebox, with Boss Fire claiming prior rights to Fyrebox and blocking Trafalgar’s use of Firebox as an alternative.
Battle then turned to the New Zealand market, with a reprise of the same legal arguments.
The High Court was told Trafalgar claimed rights in New Zealand to use the product name Fyrebox arising from first use, referencing a 2016 LinkedIn post by its CEO announcing the launch of its then Fyrebox product. Described in court as a pre-launch teaser, Trafalgar said the post was ‘sent’ to over 500 New Zealand followers, receiving ‘likes’ from three.
Justice Grau ruled a LinkedIn post is not ‘use’ of a trademark in New Zealand. It is no more than a post on a social media platform. Some active response is required for there to be ‘use’ in a legal sense. ‘Like’ means little, Justice Grau said. There is no evidence of what the follower saw or liked.
Justice Grau ruled a prior email exchange between Boss Safety and a potential New Zealand customer did amount to ‘use,’ supporting Boss Safety’s claim to a prior New Zealand presence for its Fyrebox brand.
Three months prior to Trafalgar’s LinkedIn post, Boss Safety received from New Zealand a product enquiry by email through its Australia-based website. An email exchange over following days identified that a potential New Zealand customer was interested in Boss Safety’s Fyrebox product. The customer was provided with specifications and directed to Boss Safety’s newly-appointed New Zealand distributor to place an order.
These email exchanges amounted to ‘first use’ rights in New Zealand supporting Boss Safety’s Trade Marks Act registration in New Zealand for its Fyrebox brand, Justice Grau ruled.
Trafalgar Group Pty Ltd v. Boss Fire & Safety Pty Ltd – High Court (30.04.24)
24.109