Taking on a GIANT
Small NZ business in trademark stoush with Chinese global behemoth Huawei
The Intellectual Property Office of New Zealand has invalidated the trademark for a range of electronic goods sold by Huawei under the brand OptiXstar after the giant Chinese corporate threatened a New Zealand minnow with legal action.
Network Design Group (NDG), a networking solutions consultancy based in Ashburton, applied to the Intellectual Property Office of New Zealand (IPONZ) to invalidate the trademark after legal letters from Huawei.
NDG sells networking hardware under the name Optistar and uses a logo with that brand name and a fivepointed star.
Huawei uses a logo with the brand name and a four-pointed star on the OptiXstar networking hardware.
NDG director Mark Doyle told BusinessDesk that Huawei’s lawyers had demanded that his company stop using the Optistar logo.
“They threatened that they were going to take us to court, and they would basically take the trademark off us because we’ve never been using it, and we’ve done nothing to warrant keeping it.
“It was really, really nasty.”
He said another application against the trademark Huawei OptiXstar was also being considered.
Likely to confuse
IPONZ’s assistant commissioner of trademarks, Nigel Robb, wrote in his judgment that the two logos were similar. “I also agree that deception and confusion are likely in connection with goods that are the same or similar to the registered goods and the goods for which NDG’s Optistar logo is known.”
He also noted that not all of the goods sold by Huawei under that brand were in the same category.
As a result, Robb revoked the OptiXstar trademark for USB cables, modems and digital signal processors.
A representative from Huawei told BusinessDesk: “Huawei respects the recent trademark decision made by IPONZ and does not expect any impact to our local business operations.” They added that the company did not wish to comment further on the ongoing case.
We had it first
Doyle said that NDG had been “quietly selling” networking products in New Zealand under the Optistar trademark for years.
“We set up a website, and we trademarked Optistar, and then three, maybe four years ago, we got this letter from Huawei, these lawyers, ‘If you don’t sign it over to us, we will take it to court’.”
According to the IPONZ database, NDG’s trademark application was registered in 2013, while Huawei’s OptiXstar was registered in 2019 and OptiXstar in 2021.
Doyle said he and the other director offered to work out a deal that would work for both parties, but Huawei refused.
“It’s been very much a scorchedearth approach. They’ve pretty much said . . . we’re not open to discussions, we’re not open to any form of working together; It’s our way or no way at all.”
They threatened that they were going to take us to court, and they would basically take the trademark off us . . . NDG director Mark Doyle