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ABSTRACT
It would be natural to suppose that once a trade mark has been expunged from the trade marks register it would cease to have legal force or effect. For many years this was indeed the position in British Commonwealth countries. However, the New Zealand Supreme Court has recently held that a trade mark whose registration has been revoked can still block a subsequent application for registration in certain circumstances. In so doing the New Zealand Supreme Court followed an earlier decision of the Singapore Court of Appeal that was to much the same effect. This article argues that these decisions are problematic on policy grounds and rest on faulty doctrinal premises. It is important to recognise these issues now, not least because there is a danger that this approach may spread to other jurisdictions, including the EU, Hong Kong, and the UK.
Acknowledgments
Our thanks go to Rob Batty, Nick Holmes, Emily Hudson, Megan Jones, Ng-Loy Wee Loon, and the two anonymous referees.
Disclosure statement
No potential conflict of interest was reported by the authors.
Notes
1 For discussion, see Lionel Bently and Robert Burrell, ‘The Requirement of Trade Mark Use’ (2002) 13 Australian Intellectual Property Journal 181.
2 [2011] SGCA 6 (Singapore Court of Appeal). For commentary, see Tan Tee Jim and Ng-Loy Wee Loon, ‘Intellectual Property’ in Teo Keang Sood (ed), Singapore Academy of Law Annual Review of Singapore Cases 2011 (Academy Publishing 2012) 366–71.
3 [2020] NZSC 110 (New Zealand Supreme Court (NZSC)).
4 The term ‘zombie mark’ was introduced in Michael Handler and Robert Burrell, ‘Zombie Marks? Ceased Registrations, Failed Applications and Citation Objections under Section 44 of the Trade Marks Act’ (2013) 23 Australian Intellectual Property Journal 206. The term was adopted by the Australian Trade Marks Office in 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 (Australian Trade Marks Office (ATMO)) (1872 Holdings) and subsequently used in Gaseosas Lux SA v Sanson [2017] ATMO 151 (ATMO) [11]–[12] and iGuard Pty Ltd v iGuard Australia Pty Ltd [2018] ATMO 91 (ATMO) [30]. It differs from the way the term has been used in some US commentary (to refer to abandoned trade marks adopted for re-use by third parties: see, eg, Jerome Gilson and Anne Gilson LaLonde, ‘The Zombie Trademark: A Windfall and a Pitfall’ (2008) 98 Trademark Reporter 1280) and in some EU commentary (to refer to a trade mark containing an artistic work in which copyright has expired: see, eg, Martin Senftleben, The Copyright/Trademark Interface: How the Expansion of Trademark Protection Is Stifling Cultural Creativity (Wolters Kluwer 2021) 4).
5 As will be explored in section 5, there are additional safeguards in place in the UK and EU for dealing with ‘unused’ marks blocking an applicant's path to registration that mean that the precise scenario in Campomar and ICB is less likely to arise. However, the potential for ‘zombie marks’ remains in these jurisdictions where an applicant seeks to have the registration of a conflicting mark revoked on the basis of genericide or deceptiveness.
6 (1932) 49 RPC 269 (Comptroller-General). See also the earlier decision of Texas Company's Application (1915) 32 RPC 442 (Court of Appeal of England and Wales (EWCA)).
7 Palmolive (n 6) 276.
8 ibid 277.
9 ibid 276.
10 See, eg, POLYMAT Trade Mark [1968] RPC 124 (Board of Trade) 126 (adopting the approach taken in Palmolive, albeit without citing it); Kambly SA Spécialités de Biscuits Suisses v Intersnack Knabber-Gebäck GmbH & Co KG [2004] EWHC 943 (Ch) (Chancery Division of the High Court of Justice (EWHC (Ch))) [26].
11 See, eg, Legal & General Life of Australia Ltd v Carlton-Jones & Associates Pty Ltd (1987) 9 IPR 447 (Australian Patent Office) 451 (following the approach taken in POLYMAT (n 10)).
12 Roll International Corporation v Teleflora (Australia) Inc (1997) 40 IPR 318 (ATMO) 321.
13 See, eg, Omega SA v Robinson [2012] ATMO 92 (ATMO) [10]–[11]; 1872 Holdings (n 4) [17]–[31]; Real Estate Institute of Australia Ltd v REA Group Pty Ltd [2017] ATMO 82 (ATMO) [28]. On the recent controversies, see Handler and Burrell (n 4).
14 Unilever plc v Cussons (New Zealand) Pty Ltd [1997] 1 NZLR 433 (New Zealand Court of Appeal (NZCA)) 440–41.
15 Hugo Boss AG v Reemtsma Cigarettenfabriken GmbH [2009] SGIPOS 7 (Intellectual Property Office of Singapore (IPOS)).
16 Campomar (n 2) [18].
17 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [1989] OJ L40/1.
18 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark [1993] OJ L11/1, art 54(1). These origins were not identified in either Campomar or ICB. As a result, neither the Singapore Court of Appeal nor the New Zealand Supreme Court considered the approach taken at the EU level.
19 Trade Marks Act 1998 (Singapore) (TMA SG), s 22(8) (renumbered s 22(7) with effect from 31 July 2005).
20 Trade Marks Ordinance (Hong Kong) cap 559 (TMO HK), s 52(7).
21 Trade Marks Act 2002 (NZ) (TMA NZ), s 68(2).
22 International Consolidated Business Pty Ltd v SC Johnson & Son Inc [2014] NZIPOTM 27 (IPONZ) [70] (ICB (IPONZ)). On the need for the applicant for revocation to plead that an earlier date should apply, see Omega SA v Omega Engineering Inc [2003] FSR 49 (EWHC (Ch)) [11].
23 ICB also sought to argue that Johnson's application for registration should be rejected on the basis that ICB was the ‘owner’ of the ZIPLOC mark as at 19 April 2013. While this argument was successful at IPONZ (SC Johnson & Son Inc v International Consolidated Business Pty Ltd [2017] NZIPOTM 4 (IPONZ) [39]), it was rejected by the Court of Appeal (International Consolidated Business Pty Ltd v SC Johnson & Son Inc [2019] NZCA 61 (NZCA) [90]–[91] (ICB (NZCA)) and leave to appeal to the Supreme Court was not granted on this issue (International Consolidated Business Pty Ltd v SC Johnson & Son Inc [2019] NZSC 71 (NZSC) [11]). For analysis of this aspect of the litigation, see Earl Gray and Rob Batty, ‘Ownership Jurisprudence under the Trade Marks Act 2002—Past and Future Directions’ (2019) 9 New Zealand Intellectual Property Journal 1.
24 ICB (NZCA) (n 23) [83]–[85].
25 The only relevant difference is that in Campomar the gap between the applicant's filing date and the date of cessation of the rights in the mark whose registration was revoked was two months.
26 [2003] RPC 50 (UK Trade Marks Registry (UK Reg)).
27 ICB (n 3) [43], [45].
28 See TRANSPAY Trade Mark [2001] RPC 10 (UK Reg) [16]. This summary is slightly simplistic since account also needs to be had of any period in which an expired mark can be restored to the register. In all of the jurisdictions with which we are concerned this period is six months after expiry. See Trade Marks Rules 2008 (UK) (TMR 2008 UK), r 36; Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark [2017] OJ L154/1 (EUTMR), art 53(3); TMA NZ, ss 59–60; TMA SG, s 19(3); TMO HK, s 50(3).
29 ICB (n 3) [47]–[55], [60].
30 ibid [53].
31 TMO HK, s 13(1)(b).
32 William Cornish, ‘Trade Marks: The Europlan for Trade Marquetry’ [2006] New Zealand Law Review 665, 665.
33 See Trade Marks Act 1953 (NZ), s 17(2).
34 ICB (n 3) [80]–[81].
35 ibid [72], [84].
36 See TMA NZ, s 66(1A) (non-use period ends one month before the application for revocation).
37 The latter date is 1 February 2020 because it will already have been established that the opponent had not been able to show any use of its mark from 1 February 2020–1 February 2023.
38 This follows from TMA NZ, s 66(1A), which provides that the period of non-use needed to establish a ground of revocation must commence ‘from a date after the actual date of registration’ (with ‘actual date of registration’ being defined in contradistinction to the ‘deemed date of registration’, the latter being the date of the application for registration in New Zealand or in a convention country: see ss 5 and 51(a)). In the scenario, this means that if the opponent's mark was entered on the register on 1 September 2019, the earliest date on which grounds for revocation potentially existed was 1 September 2022—after the applicant's filing date. See further ICB (NZCA) (n 23) [82].
39 Letters of consent have legal force in New Zealand pursuant to TMA NZ, s 26(a).
40 See also Malobika Banerji, ‘“Deemed Dates” and Earlier Trade Marks: Singapore Clarifies the Position’ (2011) 6 Journal of Intellectual Property Law and Practice 520 (discussing the need for new filing strategies after Campomar).
41 See TMA NZ, ss 66(3)–(4). In ICB, the Supreme Court showed some awareness of the practical consequences of its decision, but failed to appreciate quite how early the application for revocation would need to be made. It asserted: ‘A warning could still be given at the end of the three-year non-use period, with the application for new registration being lodged at the same time. The revocation application could then be filed later, after the one-month grace period, with a request, under s 68(2)(b), that revocation be backdated to the end of the three-year period of non-use (the date of the application for the new registration)’: ICB (n 3) [57] (emphasis added). The problem with this suggestion is that if the application for revocation is made more than one month after the warning, any use by the registered owner after the warning but more than one month before the revocation application will defeat the non-use application.
42 ICB (n 3) [59].
43 For comprehensive analysis of this issue under EU law, see Ilanah Fhima and Dev S Gangjee, The Confusion Test in European Trade Mark Law (Oxford University Press 2019).
44 See TMA NZ, s 65(1). For discussion, see Rob Batty and Richard Watts, ‘Aggrieved No More: Is There a Need for Standing to Remove Unused Trade Marks?’ [2013] New Zealand Law Review 1. See also Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13 (High Court of Australia) [34]–[45], strongly criticising the approach taken in a number of earlier Australian cases to standing requirements. In Australia the standing requirement has been abandoned in non-use cases, although it remains for some other mechanisms for challenging the validity of a registered mark.
45 See, for example, ICB (IPONZ) (n 22) [37]–[38].
46 Nick Holmes, ‘New Zealand's Highest Court Find[s] that “Zombies” Do Exist in New Zealand after All’ (Institute of Patent and Trade Mark Attorneys of Australia, 15 February 2021) <ipta.org.au/news/new-zealands-highest-court-find-that-zombies-do-exist-in-new-zealand-after-all/> accessed 31 August 2021 (drawing attention to Tui AG v DB Breweries Ltd [2010] NZIPOTM 31 (IPONZ) which can be read as setting up a requirement that an objection based on a conflicting mark must have been raised by the registry before the applicant for revocation of that mark could be considered to be ‘aggrieved’. For what it is worth, our view is that Tui rests on a misreading of KODIAK Trade Mark [1987] RPC 269 (EWCA)).
47 This will inevitably remain the case despite the best efforts of trade mark offices to publicise the issue. It is notable, for example, that the Intellectual Property Office of Singapore has publicised this issue both through Practice Circulars and training sessions for trade mark agents. Our thanks go to Mark Lim of IPOS for bringing these efforts to our attention.
48 It is worth drawing particular attention in this context to Nitro AG v Nitro Circus IP Holdings LP [2020] NZIPOTM 23 (IPONZ). The owner in that case had sought to argue, consistent with the second problem identified here, that the applicant could not be an aggrieved person if removal of the mark in question from the register would not improve their position. Assistant Commissioner Alley was able to conclude on the facts at hand that the applicant's position would be sufficiently improved to justify concluding that the applicant had standing, but the broader point being made here stands.
49 TMO HK, s 52(7).
50 TMA UK, s 46(6).
51 EUTMR, art 62(1).
52 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks [2015] OJ L336/1 (2015 Trade Marks Directive) art 47(1).
53 Amanda Michaels, A Practical Guide to Trade Mark Law (3rd ed, Sweet & Maxwell 2002) 130 [4.75].
54 RIVERIA (n 26) [15], [20].
55 [2011] RPC 13 (Appointed Person). See also Skyclub (O/462/20, 18 September 2020) (Appointed Person) [18]–[19] (considering that the same outcome would apply under the EUTMR).
56 Starbucks (n 55) [26]–[34]; cf Case R787/2005-2 Mejerigaarden Holdings A/S v Berentzen Brennereien GmbH & Co KG (OHIM Second Board of Appeal, 23 January 2007).
57 Campomar (n 2) [29].
58 ICB (n 3) [52].
59 Campomar (n 2) [29].
60 ibid [38].
61 ICB (n 3) [53].
62 Campomar (n 2) [29], [40]; ICB (n 3) [55].
63 Palmolive (n 6) 276.
64 This is because mark C might always conflict with both mark A and mark B in circumstances where there is no conflict whatsoever between A and B (as, for example, where C is a composite mark made up of the word NIKE and the Adidas three stripe device for sporting goods).
65 Article 58(1) of the EUTMR provides that the ‘rights of the proprietor of the EU trade mark shall be declared to be revoked’ while art 19 of the 2015 Trade Marks Directive provides that ‘[a] trade mark shall be liable to revocation’.
66 Annette Kur and Martin Senftleben, European Trade Mark Law: A Commentary (Oxford University Press 2017) 595–96 [11.88].
67 See European Union Intellectual Property Office, Guidelines for Examination of European Union Trade Marks: Part C: Opposition: Section 1: Opposition Proceedings, part 7.3.2 <guidelines.euipo.europa.eu/binary/1922895/2000160000> accessed 31 August 2021.
68 The relevant provisions of UK law are referenced below. In the EU, see EUTMR, art 47(2); 2015 Trade Marks Directive, art 44.
69 See TMA UK, s 6A; TMR 2008 UK, r 17(5)(d).
70 See Form TM8: Notice of Defence and Counterstatement <assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/944812/TM8-Dec20-EU.pdf> accessed 31 August 2021. Applicants who wish to contest an opposition are always required to file such a notice: TMR 2008 UK, r 18. For ‘fast track’ oppositions governed by r 17A opponents have to lodge proof of use with the notice of opposition, helping to establish proof of use as the default.
71 TMA UK, s 6A(2).
72 See TMA NZ, s 93.
Additional information
Notes on contributors
Michael Handler
Michael Handler is a Professor at the School of Private and Commercial Law, Faculty of Law & Justice, University of New South Wales.
Robert Burrell
Robert Burrell is the Professor of Intellectual Property and Information Law at the Faculty of Law, University of Oxford, and a Professor of Law at the Melbourne Law School, University of Melbourne.