Telecom rules okay

There's only one 'telecom', the High Court decides

The word "telecom" is a generic term but New Zealanders so closely associate it with Telecom NZ that Nortel Networks has been prevented from using the trade mark "NT Northern Telecom" for its services business in this country.

That's the gist of a decision made by Justice Goddard in the High Court last month after hearing an appeal against a decision made last November by the assistant commissioner for trademarks.

In the original case, the assistant commissioner upheld Telecom NZ's submission that Nortel's "NT Northern Telecom" trademark shouldn't be registered here and cited the strong identification in New Zealanders' minds of the word telecom with Telecom NZ.

The controversy centres around the fact Nortel is an abbreviation of Northern Telecom and in Canada, where Nortel has its headquarters, Nortel is strongly associated with the term Northern Telecom.

Nortel NZ appealed the assistant commissioner's decision on several grounds, some of them relating to legal technicalities, but its main thrust was that the word telecom is a generic term relating to telecommunications and thus can't be the subject of a trade mark.

However, Justice Goddard upheld the original decision, noting "I agree with the assistant commissioner's finding that the stylisation of the appellant's device mark and the addition of the adjective 'Northern' would do nothing to disabuse the New Zealand consumer of an overriding perception that any product or service using the mark Telecom would be that of [Telecom NZ]."

He also agreed with the assistant commissioner's view that the word Northern would most likely be interpreted by consumers as referring to a regional branch of Telecom NZ.

Not in Nortel's favour was its own decision in 1987 to change its name from Northern Telecom NZ to Nortel NZ Ltd.

The case has been dragging through the courts for some time, having first been activated in 1998 when Telecom NZ filed notices of opposition to Nortel's applications for registration of the NT Northern Telecom trademark under the "service" provision of the Trade Marks Act.

Nortel first registered the mark in 1976 for "goods" purposes, but Telecom NZ took exception to its use under the "service" provisions of the act.

Join the newsletter!


Sign up to gain exclusive access to email subscriptions, event invitations, competitions, giveaways, and much more.

Membership is free, and your security and privacy remain protected. View our privacy policy before signing up.

Error: Please check your email address.

Tags nortelhigh courttelecom

More about NortelNortel NetworksNorthern Telecom

Show Comments