Existing Registration Not Necessarily a Bar for a Different Applicant’s Identical Application

In 2019 NZCA 61 International Consolidated Business Pty Ltd v SC Johnson & Son Inc the Court of Appeal confirmed that when a prior registration is in force a different applicant can make a valid application for the identical mark and goods, which can proceed to registration once the prior registration is no longer in force...

Both parties seek ownership of the ZIPLOC mark primarily in respect of plastic bags and plastic wrap. On 19th April 2013 SC Johnson filed its application for the ZIPLOC mark and three days later filed an application for revocation of International Consolidated’s registration based on non-use. The revocation application was successful and was held to take effect from 22nd April 2013. Following the acceptance of SC Johnson’s application, International Consolidated filed another application for the mark and subsequently opposed SC Johnson’s application. The Assistant Commissioner’s decision held that SC Johnson’s application was not valid on the basis that International Consolidated were the owner of the mark at the date of SC Johnson’s application. As earlier reported the High Court Judge quashed the Assistant Commissioner’s decision on the basis that when making the determination of ownership at the date of application there is discretion available under section 26(b) to take events subsequent to the application date into account. In exercising her discretion to give effect to the purposes of the Act the Judge held that the effective date for revocation of International Consolidated’s registration was 19th April 2013. The Judge ordered a rehearing before the Assistant Commissioner on the issue of ownership.

The Court of Appeal first held that the Judge did not have jurisdiction to alter the deemed date of revocation, as the time for determination of that issue was when the revocation action was determined. Nonetheless, the Court of Appeal held that the date of revocation has no bearing on the date that an identical application can be filed in the name of another party. It noted that when the Trade Marks Act 2002 was being formulated and introduced there was no evidence that it was the intention of the legislature to prohibit the long-established practice of filing applications for registration in anticipation of and conditional upon a successful application for removal for non-use.

The Court of Appeal also held that a corollary of the non-use provisions is that first use of a trade mark does not determine ownership in perpetuity. As such, a party who has had their registration revoked for non-use can only subsequently establish ownership by way of use on account of use made after the non-use period which caused the revocation of their prior registration. A further consequence of this was that International Consolidated were not able to rely on prior use to support their opposition to SC Johnson’s application.

Consequently, given there were no outstanding section 17 issues and given that SC Johnson’s ownership claim is not defeated by any qualifying use by International Consolidated, the Court of Appeal found no benefit in referring the matter back to the Assistant Commissioner and so ordered that SC Johnson’s mark proceed to registration.

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