Drinks giant wins world famous fight

BUBBLING AWAY: A Paeroa businessman is facing off with Coca-Cola over the phrase 'world famous'.

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A David and Goliath stoush over the registration of "World Famous in New Zealand" as a trademark has been won by soft-drink giant Coca-Cola Amatil.

But Paeroa businessman Tony Coombe wants to go another round.

Coombe has fought a legal battle for the free use of the "World Famous" phrase since 2007, has spent $30,000 so far and expects the bills to rise to about $50,000 with little prospect of reparation.

Why? He owns a non-trading company named World Famous in New Zealand but says the main reason for his opposition is because the phrase had become a "Kiwi-ism".

"It's used everywhere and it's more or less used in everyday language so I thought I'd put my hands up and say 'no'," he said after his Intellectual Property Office hearing in December.

However, assistant commissioner of trademarks Brian Jones decided in favour of Coca-Cola Amatil (NZ), which argued it had used the phrase since 1993 in connection with its L&P brand of soft drink.

Saatchi & Saatchi's Roy Meares developed the phrase specifically for Coca-Cola's use and the company applied to register it as a trademark in 2004.

Jones knocked back Coombe's arguments that the mark was not distinctive enough to be registered, or that it already had an existing generic use in both trade and everyday language.

He disregarded Coombe's contention that, by 2004, the phrase had already been used as a book title, a music title, a television programme title, and to describe kiwiana and prominent persons.

Coombe and his lawyer David Marriot lodged an appeal on Monday to the High Court at Wellington challenging the ruling on several grounds.

Central to the argument is the view that the public commonly uses the phrase without any reference to L&P and therefore that is not distinctive enough to be trademarked.

Coombe also argues the phrase is a "limping mark" because it does not stand on its own without the "L&P" name there to identify it.

Jones was called in from Australia to hear the case. A Coca-Cola Amatil spokesperson said the company is pleased with the decision.

"Our decision to seek trademark rights in 2004 was based on the investment Coca-Cola Amatil has made in creating and promoting the phrase, and to protect its commercial use for non-alcoholic beverages and the L&P brand."

Estimated product sales of goods under the mark have averaged well over $9 million a year between 2000 and 2005.

- © Fairfax NZ News