Does a recent NZ trade mark revocation decision raise the bar too high for removal applicants?

Does a recent NZ trade mark revocation decision raise the bar too high for removal applicants?

Does a recent NZ trade mark revocation decision raise the bar too high for removal applicants?

Tui Ag v DB Breweries Limited [2010] NZIPOTM 31

A recent decision by the Intellectual Property Office of New Zealand1 (“IPONZ”) has raised the bar significantly in what a removal applicant must establish to qualify as an “aggrieved person”.  It also demonstrates that in a revocation action in New Zealand, timing is everything.

History of the proceedings

DB Breweries Limited’s (“DB”) predecessors in title had sold beer in New Zealand under the TUI mark since 1889.  Over the following 120 years, the TUI mark has become well known throughout New Zealand in relation to beer.  More recently, the use of the mark had expanded to include use on a broad range of merchandise such as clothing, headgear, stationery and books.  DB applied for registration of the trade mark TUI in class 39 on 2 June 2009 and subsequently in classes 16 and 41 on 12 July 2009 (“Lodgment Date”).  On the Lodgment Date, DB also applied for revocation of Tui AG’s (“TUI AG”) New Zealand trade mark registration Nos 648430 TUI, 652077 TUI trade mark   (both Class 16), 648431 TUI and 652078   (both Class 39).  DB relied upon both of the non-use grounds provided under Section 66 of the New Zealand Trade Marks Act 2002 – namely that the marks had not been used during the period 12 May 2006 – 12 May 20092, and that use of the trade marks had been suspended for an uninterrupted period of three years prior to the Lodgement Date3.  In order to succeed under either ground, DB needed to establish that it was an “aggrieved person”4.

A key issue: was DB Breweries an “aggrieved person”?

The case largely turned on evidence filed by the respective parties.  However the decision is interesting in relation to the IPONZ Assistant Commissioner’s assessment of “an aggrieved person”.

DB was found to be an aggrieved person in relation to the revocation actions against TUI AG’s class 39 registrations, as those registrations were raised as objections to registration of DB’s class 39 application for the TUI mark prior to the Lodgment Date.  However DB was unsuccessful in establishing that it was a person aggrieved in relation to the Class 16 registrations, for the following reasons:

  1. Citation objections – generally speaking, a removal applicant is “aggrieved” if it has a pending application which is being blocked by the mark sought to be removed.  However, in this case DB’s class 16 application was filed on the same day as the removal application.  Six days later, IPONZ issued an adverse report, citing these registrations against registration of DB’s TUI application.

    Although TUI AG’s Class 16 registrations did later obstruct DB’s application for the TUI mark, this did not occur until after the Lodgement Date.  As such, the Assistant Commissioner did not consider that DB could rely upon its Class 16 application to establish that it was a “person aggrieved” as at the Lodgement Date.  This is in spite of the fact that it was inevitable that the prior TUI Class 16 registrations would be raised as objections to registration of DB’s class 16 application, which happened six days later.

  2. Trading activities – DB lodged evidence that it had used the TUI mark in relation to Class 16 goods since 2005, including evidence that it had sold over 100,000 copies of a book under the trade mark.  Nevertheless, despite the apparent prima facie risk that such use infringed TUI AG’s registration No. 648430 TUI (word mark) in particular, IPONZ found that this was not enough to establish that DB was aggrieved, because:

    – DB’s evidence did not establish that it was trading in its Class 16 goods as at the Lodgement Date, although it seemed to have lodged evidence demonstrating use of its mark in Class 16 in 2009;

    – there was no evidence that TUI AG had ever relied upon its Class 16 registrations to prevent DB from selling its books under the TUI mark, nor was there any evidence of any “incidents where those registered marks had hindered, or threatened to hinder, [DB] in the course of its trade in Class 16 goods.

Analysis and commentary

IPONZ’s dismissal of DB’s trading activities in Class 16 seems inconsistent with the notion that “aggrieved person” is to be given a liberal or wide interpretation.  It suggests that a prima facie risk of trade mark infringement may no longer be enough to establish that the revocation applicant is an aggrieved person, unless there is evidence that the subject registration has been relied upon as the basis of actual allegations of trade mark infringement against the revocation applicant.  Moreover, the decision of the Assistant Commissioner not to afford aggrieved person status on the basis of the filing of and subsequent objection to the class 16 application, whilst technically correct, indicates a strict interpretation of the “aggrieved person” requirement and a lack of flexibility on the part of IPONZ, which practitioners need to be wary of.

This case may be a high watermark as to what is required to establish “aggrieved person” status in relation to New Zealand revocation proceedings.  It remains to be seen whether these more stringent requirements will be applied in subsequent New Zealand revocation actions.  The decision nonetheless demonstrates just how critical it is for a revocation applicant to establish clearly and unequivocally why it is aggrieved as at the date upon which it applies for revocation of a New Zealand trade mark registration.

The end result of this decision was that DB’s revocation actions were all unsuccessful, as TUI AG was able to establish that it had used its marks in relation to its Class 39 trade mark registrations.

Endnotes

  1. Tui Ag v DB Breweries Limited [2010] NZIPOTM 31 (21 December 2010).
  2. ss 66(1)(a).
  3. ss 66(1)(b).
  4. ss 65(1).