German building materials company Knauf has failed to get Fletcher Building’s use of the “Batts” trade mark for building insulation thrown out.
In a 113-page New Zealand High Court judgment, Justice Brendan Brown refused a request to revoke the trade mark. However, he limited Fletcher’s claim of infringement of the trade mark to the use of “Batt” on the www.earthwool.co.nz website which sold Knauf insulation, and said the use of the word in the installation instructions on the packaging didn’t infringe trade mark.
“There is clearly a not insignificant degree of use of the words `batt’ and `batts’ to describe insulation in a generic, non-proprietary sense,” Justice Brown said.
“However, collectively this evidence is not of a quantity or a quality to cause me to be satisfied that the trade mark has become a common name in general public use for pieces of fibrous insulation.”
Separately, Justice Brown ruled that Knauf’s insulation product Earthwool contravened the Fair Trading Act, in the use and marketing of the name, and that in future it must be accompanied by the words “glasswool” or “glass insulation” in the same font and print size.
Fletcher had argued that marketing of Earthwool was misleading because it conveyed the impression it was made from the wool of sheep or other animals when it was not.
Auckland-based Fletcher is facing increasing competition from Knauf, which has about $NZ1.9 billion ($A1.77 billion) in annual insulation sales worldwide compared to Fletcher’s $NZ1.3b of total building product sales which also includes plasterboard, aluminium doors and windows, and roofing.
The High Court case shows intense rivalry between the companies in New Zealand, where an estimated 15 million square metres of insulation products are sold every year.
Fletcher’s subsidiary Tasman Insulation makes more than seven million square metres of insulation from recycled glass a year, sold under the Pink Batts brand.
Knauf exported some of its Earthwool insulation to New Zealand in 2011, with packaging displaying the words “batt” and “batts” in the installation instructions, with sparked the litigation.
Fletcher protested the use of its trade mark word “Batts”, with Knauf subsequently claiming the word had become generic to describe insulation, although it later agreed to stop using the word.
In November 2011, Knauf filed to revoke the “Batts” trademark and in December, Fletcher started trademark infringement proceedings against Knauf and websites marketing its product.
In 2012, the two companies stepped up their competitive marketing campaigns, with Knauf saying its product was driving competitors “batty” and Fletcher responding by claiming its rival’s product was less stiff and “susceptible to slumping”.