The Barilla Group (Barilla) has failed in its opposition to registration of the trade mark BARILLA DUMPLING for restaurant services in New Zealand in Shao Chenghu, Shao Jun and Shao Li v Barilla G. e R. Fratelli – Societa per Azioni [2024] NZIPOTM 3. The case illustrates how so-called “zombie trade marks” can potentially affect the outcome of New Zealand trade mark proceedings.
Barilla’s predecessors began selling pasta in 1877 and Barilla now the world’s largest pasta producer. In 2016, Shao Chenghu, Shao Jun and Shao Li (Applicants) applied to register the trade mark BARILLA DUMPLING in 2016 in Aotearoa New Zealand for “Asian-style restaurant services“.
Whilst IPONZ cited Barilla’s prior registration of the mark CASA BARILLA as an objection to registration of the Applicants’ trade mark, the Applicants overcame that objection by establishing honest concurrent use of their trade mark and “special circumstances”.
Barilla opposed registration of the BARILLA DUMPLING mark, relying upon its prior registrations for various BARILLA trade marks and related reputation in those marks. However, several of those trade mark registrations had been partially revoked for non-use after the filing date of the BARILLA DUMPLING mark, creating “zombie marks”.
What are “zombie marks” and how did they arise in this opposition?
As we have previously reported, “zombie marks” are those pending or registered at the time a trade mark is filed, which are subsequently removed from the Register, whilst the trade mark application remains alive and kicking (unlike the zombie).
Following the Ziploc case in 2020,[1] in New Zealand trademark proceedings the state of the Trade Mark Register “must be assessed for the presence of competing marks at two points: at the time of application and of registration“.[2]
Accordingly, Assistant Commissioner (AC) Nichols was required to assess Barilla’s prior trade marks twice – both as at the filing date of the BARILLA DUMPLING mark and as at the hearing date of this opposition.
How did the Applicants defeat Barilla’s opposition?
Whilst the BARILLA DUMPLING mark was found to be similar to the BARILLA mark, AC Nichols concluded, “I do not think a significant number of people would perceive BARILLA DUMPLING on a restaurant as being a sub-brand of, or otherwise connected with, food products on which they had seen the BARILLA brand“.[3]
However, the case became much more complex when AC Nichols had to consider Barilla’s various class 43 registrations for CASA BARILLA. At the filing date for the Applciants’ trade mark, the CASA BARILLA registration covered essentially the same services as the applicants’ “Asian-style restaurant services”. AC Nichols concluded that a significant number of people would be misled into thinking that the applicants’ restaurant services came from the same source as the CASA BARILLA services, such that CASA BARILLA prima facie obstructed registration of the Applicants’ trade mark.
However, before IPONZ, the Applicants successfully established claims to honest concurrent use of their trade mark and “special circumstances”, sufficient for IPONZ to withdraw citation of CASA BARILLA as an objection to registration.
Did the “zombie mark” CASA BARILLA prevent registration of Barilla Dumpling?
Barilla’s registration for CASA BARILLA was partially revoked with effect from 26 July 2022, including for its services providing food and drink.
Crucially, however, CASA BARILLA was only registered on 11 December 2015, meaning that the absolute earliest the registration could be removed from the register for non-use was December 2018,[4] due to the three year grace period afforded to New Zealand trade mark registrations.
Unfortunately for the Applicants, that date was after the filing date of its BARILLA DUMPLING mark. This meant that the CASA BARILLA registration remained as a potentially valid opposition ground (notwithstanding that it had been removed from the trade mark register many months before the hearing of this opposition) – as a so-called “zombie mark”.
AC Nichols concluded that the Applicants had established “special circumstances” sufficient to overcome Barilla’s CASA BARILLA, partly because:
- Registration of the BARILLA DUMLPING mark is unlikely to cause significant inconvenience to Barilla, “because there is no evidence it had established any valuable goodwill in the mark CASA BARILLA in connection with the services of providing food and drink“;[5] and
- Whilst Barilla raised concerns about dilution of its BARILLA brand, AC Nichols concluded, “The goodwill associated with those marks is strongly associated with Italian food, and it is not clear that would be affected by an Asian-style restaurant”.[6]
What about the Opponent’s claim to “well known” BARILLA trade marks
Unlike Australia, in New Zealand an unregistered but well-known trade mark can be cited by IPONZ as an objection to registration.[7] This provision can also be relied upon by an opponent in a trade mark opposition, as Barilla did here in relation to its BARILLA trade marks. However, after careful consideration of Barilla’s evidence, AC Nichols concluded that it had “not established the higher threshold of reputation required to establish the BARILLA word and device were well known in New Zealand at the Filing Date“[8].
Lessons for brand owners and trade mark attorneys
This case demonstrates once again a significant difference between Australian and New Zealand trade mark proceedings. Specifically, if the same situation had occurred in Australia the assessment would have been much simpler, as Australia does not recognise “zombie marks”.
The case also provides an example of where it may be appropriate for a trade mark applicant who has successfully revoked registration of a prior mark to consider reapplying for its mark if the revoked registration still existed at the filing date of the applicant’s mark. The strategy here is to create a new filing date so that the revoked “zombie mark” registration does not exist as at the new filing date.
[1] International Consolidated Business Proprietary Limited v SC Johnson & Son Incorporated [2020] NZSC 110 (ZIPLOC)
[2] Ibid at [45].
[3] Shao Chenghu, Shao Jun and Shao Li v Barilla G. e R. Fratelli – Societa per Azioni [2024] NZIPOTM 3 at [43]
[4] Trade Marks Act 2002, s 68
[5] Shao Chenghu, Shao Jun and Shao Li v Barilla G. e R. Fratelli – Societa per Azioni [2024] NZIPOTM 3 at [149]
[6] Ibid at [149]
[7]Trade Marks Act 2002, s 25(1)(c)
[8] Shao Chenghu, Shao Jun and Shao Li v Barilla G. e R. Fratelli – Societa per Azioni [2024] NZIPOTM 3 at 103