ABSTRACT
Focusing on the recent decision of the New Zealand High Court in Zuru New Zealand Ltd v Lego, this paper considers the relationship between the rights of trade mark owners to convey source-designating messages and the ability of competitors to communicate with consumers about other matters. To convey useful information efficiently sometimes requires using a competitor’s trade mark, in order to say, for instance, ‘we are just like that other firm’s product in some respects but different in others’. What those differences might be – cheaper prices, more environmentally-sound manufacturing practices, enhanced durability, etc – will depend on the kind of creativity, sometimes creative destruction, we should expect from economic actors in consumer markets. As the Zuru decision illustrates, in the doctrinal contexts in which these issues conventionally arise – disputes over use ‘as’ a trade mark, comparative advertising, other good faith uses etc – the kind of commercial messaging conveyed by a defendant in a dispute of this kind tends to be minimally tolerated, and, only then, to the extent that the defendant’s speech does not impermissibly trespass on the property rights of the trade mark owner. As a result, trade mark doctrines generate speech asymmetries in consumer markets. And yet, for consumers, speech of this kind also has value. Instead of merely asking: to what extent can this kind of speech be accommodated to the rights of the trade mark owner to communicate about the source of goods and services? – we should also ask: what do other firms need in order to convey valuable information to consumers?
Austin, Graeme W, Communicating with Trade Marks (March 8, 2025).
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