NZ Rugby loses round one in Chiefs v Chiefs trademark dispute

NZ Rugby is seeking to prevent the incoming Papua New Guinea NRL side from using the Chiefs name already associated with the Super Rugby franchise.

However, the lawyer acting for the Australian Rugby League Commission (ARLC), which owns both the NRL and the new PNG side, Clive Elliott, told the Wellington High Court on Friday that the launch would go ahead regardless of the outcome of the hearing.

“It’s in another country and under a different jurisdiction, the only way in which the courts in New Zealand can control it is the extent to which any information reaches New Zealand,” Elliott submitted.

“We say there is no use of the trademark in New Zealand.”

Elliott added both the NRL and PNG Chiefs were prepared to geo-block its social media content surrounding the launch, demonstrating the ARLC was “doing everything in their power to address” NZ Rugby’s concerns.

Based on those undertakings from ARLC, Justice Karen Grau declined NZ Rugby’s application. The reasons for the court’s decision will be released next week.

The ruling is an early setback for NZ Rugby in a dispute that pits the national body against the ARLC, against a backdrop of growing concern within rugby about the threat the NRL poses to its market share.

But the decision does not signal the end of the trademark dispute. Unless a resolution can be reached out of court, the two organisations are on a collision course for a full court hearing, likely early next year.

In outlining NZ Rugby’s case for an interim injunction, lawyer Earl Gray, said the NRL club’s launch next week, which, according to submissions by the ARLC, will accompanied by a $500,000 marketing spend, would lead to the entrenchment of the PNG Chiefs name.

“The genie will be very hard to squeeze back into that bottle,” Gray said.

“The owner has freedom to use and exploit the brand as it sees fit. It is not for infringers to dictate that result. The ARLC … are trying to take that exclusivity and freedom away by stealth.”

However, Elliott argued the jersey launch was not going to “change the status quo when it’s one step in a long process”.

“It’s been portrayed as a milestone event that’s going to change everything,” he said. “That is not the case. Over the next three months there is limited prospect of irreparable harm to NZ Rugby.”

He said the perceived urgency was “really an edifice” which NZR had created to “try and cover up for its own inaction”.

However, NZ Rugby argued it was rugby league officials that had “brought the issue upon themselves”.

Gray said it was apparent from the ARLC’s submissions that the organisation had not performed the “rudimentary checks” to ensure the trademark was available before announcing the name of the new NRL club.

“A responsible brand owner or business person would think ‘hell we’ve got a problem here – we can’t use this’.

“But what’s clear from the defendant’s evidence is that the defendants did not bother to check that the name was available to use before adopting it.

“So they’ve brought this issue upon themselves, and, inexplicably, now want to get away with it.”

NZ Rugby argued allowing the PNG Chiefs name would create significant “confusion and brand damage”, pointing out the two codes operate in increasingly overlapping sporting markets.

Gray cited Prime Minister Christopher Luxon’s gaffe ahead of the NZ Warriors appearance in NRL play-offs last month, in which he wished the team luck with the refrain “up the Waratahs”, as example of how there is overlap between the two codes

“The average New Zealand sporting fan might not do that,” Justice Grau responded. “People interested in sport … surely they know the difference between rugby and league?”

Elliott told the court the ARLC was confident of its position.

“We have a good and arguable defence that there is no trademark infringement. would create uncertainty and cause reputational damage.

“I think my client deserves its day in court where this issue can be fully ventilated.”