The team is officially launched in Port Moresby tomorrow, but does not join the NRL until 2028.<\/p>\n
Despite the major legal setback, NZ Rugby is expected to persist with its trademark fight, with more court action likely early next year.<\/p>\n
In her decision, Justice Grau raised doubts that there could be confusion.<\/p>\n
A High Court judge says she has confidence in the astuteness and passion of Chiefs rugby fans. Photo \/ Alyse Wright <\/p>\n
\u201cThese two teams are clearly distinct. One is from Hamilton, New Zealand and has existed since 1996. The other is from Papua New Guinea, since 2026. <\/p>\n
\u201cThey play a different sport in a separate competition. I posed the question at the hearing: What would be the confusion? Might a [New Zealand] Chiefs fan buy a ticket for the wrong game, or buy the wrong jersey? <\/p>\n
\u201cThe latter appeared to be of greater concern to the NZRU. But NZRU\u2019s goodwill and long-term branding would also suggest that the risk of any confusion would be less than NZRU claims.\u201d<\/p>\n
She said she had \u201cconsiderable doubts\u201d that Chiefs rugby fans would accidentally buy Chiefs rugby league jerseys, \u201cor that potential sponsors of the PNG Chiefs will be uncertain about who they are dealing with\u201d. <\/p>\n
\u201cI do not accept the NZRU will lose control of its brand as a result of the launch [this week]: I have more confidence in the astuteness – and passion – of New Zealand rugby fans, especially fans of the Chiefs Super Rugby team.\u201d<\/p>\n
NZ Rugby and the NRL have been in the High Court over a trademark dispute involving the name Chiefs. <\/p>\n
Justice Grau\u2019s judgment has some sporting flourishes.<\/p>\n
\u201cNew Zealand and Australia share a long history of Trans-Tasman sporting rivalry. In this case, the rivalry is between two different sporting codes and is being played out in the courtroom, not on the field,\u201d she wrote.<\/p>\n
She noted NZ Rugby\u2019s concerns that it would suffer \u201cirreparable injury to its intellectual property rights and goodwill if an interim injunction is not granted ahead of the public launch in Port Moresby\u201d.<\/p>\n
The ARLC, on the other hand, had noted NZ Rugby had \u201csat on its hands\u201d for nine months since the PNG Chiefs team name was announced. <\/p>\n
\u201cIn contrast, they say they have spent time, efforts and resources developing the PNG Chiefs brand and there is no credible or even remote basis for any confusion between the New Zealand Super Rugby team called the Chiefs and a rugby league team from PNG called the PNG Chiefs,\u201d said the judge.<\/p>\n
PNG\u2019s prime minister announced the Chiefs name last year after a national competition to choose a team name between December 2024 and October 2025.<\/p>\n
Justice Karen Grau. Photo \/Linkedin<\/p>\n
The judge noted the NRL\u2019s position that the name \u201creflected the nation\u2019s cultural history of diverse tribal systems that fused into one sovereign nation in 1975.\u201d<\/p>\n
In December last year, the ARLC wrote to NZ Rugby, \u201cmaintaining its position that use of the name Chiefs by the PNG-based NRL team would not infringe NZRU\u2019s intellectual property rights or mislead Australasian consumers\u201d.<\/p>\n
\u201cARLC advised NZRU to accept the use of the PNG Chiefs name and undertake not to take any steps to oppose it. The NZRU did not respond to the letter,\u201d said the judge. <\/p>\n
NZ Rugby told the court there was \u201cmuch more than a serious question\u201d to be tried as it sought an interim injunction.<\/p>\n
\u201cIt says it is likely to succeed in making out its claims and there is no credible defence to at least some of those claims,\u201d the judge said.<\/p>\n
\u201cThe NZRU points to its Chiefs word registration for sporting and entertainment services and says the services associated with the proposed rugby league team are identical or highly similar services.\u201d<\/p>\n
NZ Rugby maintained it had the exclusive right to use and license the use of Chiefs in relation to sporting services in New Zealand.<\/p>\n
The Chiefs \u2013 with All Blacks stars such as Wallace Sititi \u2013 have had plenty of Super Rugby success. Photo \/ Getty <\/p>\n
Justice Grau said NZ Rugby also argued that the ARLC was often only using the name \u201cChiefs\u201d to refer to the PNG Chiefs and that this was intentional. <\/p>\n
\u201cIt says the NRL\u2019s Facebook and Instagram pages have millions of followers and a sizeable number must be in New Zealand, given the NRL is an Australasian competition.\u201d<\/p>\n
New Zealand consumers were also likely to be \u201cmisled or deceived\u201d under the Fair Trading Act, and it would cause \u201cirreparable loss to NZRU\u2019s rights in the Chiefs mark and branding\u201d.<\/p>\n
The ARLC said New Zealand\u2019s Trade Marks Act required NZ Rugby to establish that the PNG Chiefs was identical to Chiefs, but that PNG clearly distinguished the PNG Chiefs – \u201cjust as Kansas City distinguishes the Kansas City Chiefs, Exeter distinguishes the Exeter Chiefs and Kaizer distinguishes the Kaizer Chiefs\u201d. <\/p>\n
The judge also summed up the ARLC\u2019s position: \u201cThe alternative under s 89(1)(c) requires the NZRU to establish use of a similar sign that is likely to deceive or confuse, but there is no evidence of any confusion, and coverage about PNG Chiefs has reached New Zealand consumers since 2025. <\/p>\n
\u201cThe ARLC says it is fanciful to suggest that New Zealand consumers \u2018in perhaps the most rugby-literate country there is\u2019 could be misled by references to the PNG Chiefs.\u201d<\/p>\n
The judge said she had reviewed correspondence between the ARLC\/NRL and NZ Rugby.<\/p>\n
\u201c… it seems clear to me that the ARLC was never going to back down and change the name of its new team in response to the NZRU\u2019s concerns\u201d.<\/p>\n
\u201cThus it is apparent that NZRU could have moved significantly earlier than it did. Accordingly, I take into account the lateness of the NZRU\u2019s application as a factor that does not support an injunction.\u201d<\/p>\n
Justice Grau looked closely at the use of the term \u201cPNG\u201d before the name of the Chiefs.<\/p>\n
\u201cI agree that there might be a serious question to be tried [under trademark laws] in respect of the claim that PNG Chiefs is identical to the Chiefs mark that NZRU owns. <\/p>\n
\u201cThat would be so if NZRU is correct that \u2018PNG\u2019 is a qualifier without a difference and \u2018Chiefs\u2019 (without the qualifier) is regularly being used in any case.<\/p>\n
\u201cBut, at this very preliminary stage, I comment that I have difficulty accepting \u2018PNG\u2019 is a qualifier that does not make a difference when it comes before \u2018Chiefs\u2019 and signifies where a team playing a different sport is from.\u201d<\/p>\n
She said that contrary to NZ Rugby\u2019s evidence, it was not apparent that the \u2018PNG Chiefs\u2019 and \u2018Chiefs\u2019 names were being used interchangeably. <\/p>\n
\u201cOn my view of the material, it appears significantly more common for \u2018PNG Chiefs\u2019 to be used first in reports, before the report goes on to shorten the team reference to \u2018Chiefs\u2019. That is not interchangeable use; it is using the full name up front to identify the team being reported on, before abbreviating it.\u201d<\/p>\n
She said the High Court could accommodate a full one-day hearing for an interim injunction in February or March next year, \u201cuntil trade mark proceedings are disposed of\u201d. <\/p>\n
\u201cThat is relatively soon. And with the summer holiday period intervening, I do not consider that the NZRU will suffer irreversible damage to its brand between now and then. The parties may also move with urgency to obtain a substantive hearing on the trade mark dispute.<\/p>\n
\u201cIn contrast, the ARLC and the PNG Chiefs are less than a week away from a planned launch of a team jersey and logo. That launch will go ahead regardless of whether an injunction is granted now. <\/p>\n
\u201cThis court cannot prevent the launch in a different jurisdiction, and I agree it would be \u2018next to impossible\u2019 to rebrand the team at this stage.<\/p>\n
\u201cIt is also a critical juncture for this new team, who is in the process of signing players to make a strong start in the 2028 season. <\/p>\n
\u201cI do not consider that the launch [this week] means that \u2018the horse will have bolted\u2019, as the NZRU had suggested. That horse is already out and running, as the ARLC says, given the PNG Chiefs name has been in circulation for around a year already. In rugby (or league) terms, the starting whistle has already been blown.\u201d<\/p>\n
She said if NZ Rugby ultimately succeeded in its trade mark proceedings, it could be compensated \u201cfor any proven damage to its brand\u201d. <\/p>\n
\u201cBut if I granted an interim injunction now, this fledgling team would be starting its life under a cloud that might be impossible to clear.\u201d<\/p>\n
READ THE FULL DECISION HERE<\/p>\n
Editor-at-Large Shayne Currie is one of New Zealand\u2019s most experienced senior journalists and media leaders. He has held executive and senior editorial roles at NZME including Managing Editor, NZ Herald Editor and Herald on Sunday Editor and has a small shareholding in NZME.<\/p>\n","protected":false},"excerpt":{"rendered":"The team is officially launched in Port Moresby tomorrow, but does not join the NRL until 2028. Despite…\n","protected":false},"author":2,"featured_media":635776,"comment_status":"","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[9],"tags":[2851,1763,311665,17909,2950,124,1349,14134,3602,163756,9517,15124,2070,6871,305,35698,2959,78,29185,2936,3958,14731,1073,32033,111,139,69,1118,39157,18844,13181,699,6327,312,20863,28797,213,223,1961,57196,1803,25444,102],"class_list":["post-635775","post","type-post","status-publish","format-standard","has-post-thumbnail","category-sports","tag-also","tag-article","tag-astuteness","tag-chiefs","tag-confidence","tag-could","tag-court","tag-decision","tag-earlier","tag-embedded","tag-fans","tag-fight","tag-full","tag-has","tag-have","tag-hearing","tag-high","tag-in","tag-injunction","tag-insider","tag-judge","tag-league","tag-media","tag-moved","tag-new-zealand","tag-newzealand","tag-nz","tag-of","tag-reasons","tag-rejecting","tag-released","tag-releases","tag-rugby","tag-says","tag-she","tag-significantly","tag-sports","tag-the","tag-this","tag-trademark","tag-update","tag-urgent","tag-with"],"_links":{"self":[{"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/posts\/635775","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/comments?post=635775"}],"version-history":[{"count":0,"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/posts\/635775\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/media\/635776"}],"wp:attachment":[{"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/media?parent=635775"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/categories?post=635775"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.newsbeep.com\/nz\/wp-json\/wp\/v2\/tags?post=635775"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}