Got lawyers? Fonterra's potential trademark trouble—UPDATED

  • Law
  • May 31, 2013
  • Ben Fahy
Got lawyers? Fonterra's potential trademark trouble—UPDATED

Goodby Silverstein and Partners' Got Milk? campaign for the California Milk Processor Board was one of the most memorable campaigns of the '90s and became part of the pop cultural furniture in the US. It helped increased milk consumption in California, it has spawned a host of parodies and it's still going strong today. So why is the phrase being used by Fonterra to advertise its Anchor brand?

An eagle-eyed StopPress reader sent us a photo of an ad spotted on a petrol station forecourt and thought it was either illegal or lazy. Or both.  

Of course, this is one small call-to-action from a big campaign for a client that is thought to use six different agencies (UPDATE: Colenso BBDO's managing director Nick Garrett says this wasn't its handiwork), and it's fair to assume that consumers probably don't care that much. But lawyers do. And a quick check of the IPONZ website shows a few interesting things.

First, the California Milk Processor Board has a trademark for the phrase in New Zealand across a variety of classes. And secondly, Fonterra used to have the trademark in certain classes, but a complaint by the California Milk Processor Board was upheld in January 2011 and Fonterra's trademark was revoked. 

Fonterra Brands' group marketing manager Craig Irwin is overseas and couldn't be reached, but we've asked Fonterra's communications team why the phrase is being used and we will update the story when we hear back from them. 

The California Milk Processor Board's Got Milk? campaign was—and still is—all about increasing milk consumption. Fonterra's keen to do that too, but, given the past legal wranglings, it seems doubtful the Americans would be happy about Fonterra using its IP to push that agenda in the New Zealand market. 

On the plus side, at least it's not as bad as PETA's Got Pus? campaign. 

And in case you were wondering, here's the Copyright Council of New Zealand's explanation of the law:

Names, titles and short phrases are not generally protected by copyright because they are not of sufficient substance to constitute a “work” for copyright purposes or they are commonplace. However, names can be protected under other areas of the law. For example, you may be able to register the name as a trade mark. There is a formal registration system for “marks”, such as names and logos, which are used in the course of trade. Unlike copyright, protection under the NZ Trademarks Act requires registration and payment of a fee. Only names and marks capable of distinguishing your goods or services from another trader’s mark or name can be registered. Registration stops others using the same or a deceptively similar name or mark in the course of trade. Trade marks can be registered at the Intellectual Property Office of New Zealand.

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