Smart digital future home locked up

By ANITA MATTHEWS

If you think the term "smart home" has entered the technology vernacular along with the catchphrases smart card, smart phone, smart cars and smart school, think again.

New Zealand home automation company SmartHome Ltd claims it has had exclusive rights to use the term since 1999.

Business development manager Shane Walls-Harris said the company registered "smart home" with the Intellectual Property Office of New Zealand (Iponz) and had a monopoly on its use within the context of home automation systems.

In fact, SmartHome has also registered related terms: smart house, future home, digital house, intelligent house and other variants.

In a letter to publishers and editors, Walls-Harris said the company rejected claims that the names were generic, and it would have no trouble defending its position if challenged.

"New Zealand law stipulates that with full comprehensive registration, we own the monopoly trading and marketing rights to these names and as a result, any mention of other products or services that are not ours on offer here could be seen as misleading, or 'passing off', and are infringing on our trademark rights," he said.

SmartHome has about 50 "serious" competitors and is negotiating a settlement with one of them for trademark infringement.

"We have had several businesses comply with our requests, and a few are making the preparations for change now.

"Among them are Smart Home Automation of Auckland, DW Dentice Electrical of Wellington, HomeCom in Wellington and Itronics of Auckland," said Walls-Harris, adding that a "significant" sum was spent to register the trademarks.

Walls-Harris said he had also sent letters to New Zealand publications including the Herald and NetGuide. But some publishers and editors, including PC World and >>FFWD publisher IDG Communications, said they had not seen the letter.

NetGuide editor Nigel Horrocks said he would seek legal advice but he was under the impression that "smart home" was generic term.

Herald editor Tim Murphy said if the terms were registered, and the company concerned complained about their use, the Herald would avoid them and use a truly generic term.

"Sweeping registrations like this are problematic because they prevent the media using some expressions commonly used by our readers," he said.

"All this one means is that the Herald will have to use a more wordy descriptor for homes that are intelligently designed or constructed."

Alison MacKenzie, an associate at trademark solicitors Baldwin Shelston Waters, said that when the SmartHome applications were filed, Iponz considered that they distinguished the home automation goods and services of the applicant.

"They were published in the Iponz journal and third parties then had the opportunity to argue against registration. As there was no opposition, the trademarks were registered and can therefore now be enforced to prevent other people using them."

MacKenzie said competitors could question the registration if they considered these terms as public domain.

"They can allege the marks were directly descriptive when applied for and should never have been registered. Alternatively, they can allege that the marks have since become generic."

She cited Microsoft's action against Lindows.com where it alleged infringement of its Windows trademark. Lindows counterclaimed that Windows had become generic and now Microsoft faces a fight to keep its trademark.

John Hackett, a partner at trademark solicitors AJ Park, suggested that legislation due in August could allow for cancellation where a registered trademark had become generic through public use.

"If it can be shown that the mark has become generic through acts or inactivity on the part of the owner of the trademark registration, then it is likely it will be cancelled," he said.

"For this reason, owners of trademarks that may be vulnerable due to public generic use are writing to publishers and people using the mark generically, pointing out their rights."

Common English words that started life as registered trademarks include transistor, gramophone, trampoline and escalator.

Last year, Sony lost the exclusive use of its Walkman trademark in Austria after the Supreme Court ruled it "too generic".