Judge Holds that Assessment of Ownership can be Affected by Events Subsequent to Filing Date

In SC Johnson & Son Ltd v International Consolidated Business Pty Ltd the High Court Judge quashed an Assistant Commissioner’s decision and ordered a rehearing before the Assistant Commissioner on the issue of ownership...

As earlier reported the Assistant Commissioner held that Johnson’s application for ZIPLOC could not proceed to registration as International Consolidated were the owner of the mark on the application date. The revocation of International Consolidated’s mark with effect from just 3-days after Johnson’s application date was held to not change that determination. Section 68(2)(b) of the Trade Marks Act 2002 allows marks to be revoked with effect from earlier than the date of the revocation application. Johnson requested revocation from either the date of application to revoke or the earliest date that the Commissioner found the mark vulnerable for removal on the ground of non-use. However, the Assistant Commissioner only revoked from the date of application to revoke, citing precedent that puts the onus on the applicant for earlier revocation to request revocation back-dated to a specific date.

In the appeal Johnson argued that the possibility of having two ZIPLOC trade marks registered to different proprietors at the same time only arises on account of the legal fiction of the deemed date of registration being the date of application. It argued that any prohibition on that possibility needed to take into account intervening events between the date of application and the actual date of registration. Such intervening events were taken into account by the Assistant Commissioner in rejecting International Consolidated’s relative grounds opposition under section 25(1)(a). On that point the Assistant Commissioner held that the revocation of International Consolidated’s mark just 3-days later qualified as a special circumstance under section 26(b), thereby overriding any determination under section 25(1)(a). However, the Assistant Commissioner held that the finding on ownership trumped any finding in relation to section 25(1)(a), since the former is concerned with proprietary rights while the latter is only aimed at preventing likely deception or confusion.

The Judge agreed with the Assistant Commissioner’s exercise of discretion under section 26(b) to reject the section 25(1)(a) opposition. However, the Judge disagreed with the Assistant Commissioner’s determination that this was trumped by the ownership finding. The Judge noted that the defining of the deemed date of registration does not also identify at what date ownership is assessed, and nor is this specified elsewhere in the Act. Rather, in practice, decision makers assess whether the applicant can claim to be the owner at the date the application was made. Even a bona fide claim to ownership can be challenged on the grounds that another person is the true owner, but any such determination by New Zealand authorities has been made as of the date of application for registration. The Judge held that the strict application of that principle produces anomalies that run counter to the scheme of the Act, which is to determine and register the true owner of a trade mark. The Judge considered that such anomalies can be resolved by making the determination of ownership at the date of application subject to the discretion available under section 26(b), thereby allowing subsequent events to be appropriately considered and actioned. Likewise, while it is desirable that applicants for revocation should specifically plead an earlier date, it is not mandatory, and the Commissioner has residual discretion under section 68(2)(b) to extend the date where appropriate. Consequently, given the notionally overlapping dates, the Judge held that the appropriate date for addressing both ownership and revocation should be the date of Johnson’s application. The Judge referred the proceedings back to the Assistant Commissioner to determine ownership on that basis and taking into account evidence of legitimate and genuine prior use as well as proposed or intended use.

Author: Quinn Miller

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