New Zealand’s highest court find that zombies do exist in New Zealand after all – Lexology

In October 2020 The Supreme Court of New Zealand, New Zealands highest court, effectively held that zombie trade marks do exist in New Zealand inInternational Consolidated Business Pty Ltd v SC Johnson & Son Inc [2020] SC 32/2019.

Background

As I discussed in an earlier article of 3 May 2019[1]SC Johnson and Son Inc (Johnson) applied to register the ZIPLOC trade mark in class 16, for plastic bags and related goods. The Intellectual Property Office of New Zealand (IPONZ) raised International Consolidated Business Pty Ltds (ICB) earlier registration for the identical ZIPLOC mark as a citation objection. Three days after Johnson applied to register ZIPLOC it applied for revocation of ICBs ZIPLOC registration on the grounds of non-use. IPONZ upheld the action and removed ICB ZIPLOCs registration, clearing the path for Johnsons ZIPLOC mark to be accepted for registration.

Are there zombie marks in New Zealand?

As you may know, zombie marks are those which were pending or registered at the time a trade mark application is filed, but which are subsequently removed from the register whilst the trade mark application remains alive and kicking (unlike the zombie).

ICB successfully opposed Johnsons ZIPLOC trade mark application, on the basis that ICBs ZIPLOC (revoked) registration was still valid when Johnson applied to register the identical mark, notwithstanding that ICBs registration was removed four days after Johnsons application to register the same mark.

Johnson appealed to the High Court of New Zealand, which used its discretion to backdate removal of ICB ZIPLOC registration to a date before Johnsons own ZIPLOC application. This effectively removed the presence of the zombie mark at the time Johnson applied to register the same mark.

The matter then passed on to the Court of Appeal. Thankfully, the Court of Appeal concluded that the critical date for consideration of the state of the register is the actual date of entry on the register (i.e. the date upon which an application proceeds to registration, not the filing date). The Court of Appeal thus concluded that the fact that ICBs ZIPLOC registration existed for three days after Johnsons own ZIPLOC application had no bearing on the validity of Johnsons application.

This is all seemed to be good news. However ICB appealed to New Zealands highest court, the Supreme Court of New Zealand.

The Supreme Court zombie marks do exist in New Zealand, but

Effectively, ICB won the battle but lost the war. After extensive consideration the Supreme Court made three crucial findings, consistent with the Singapore Court of Appeal decision inCampomar SL v Nike International Limited [2011] SGCA6:[2]

(a) The register is assessed for competing marks as at the date of entry onto the register.

(b) But the date of application remains relevant. There cannot be an identical or similar trade mark belonging to different parties on the register at the same time.[101] This means that an application for registration of a trade mark must:

(i) not precede the date of application for revocation; or

(ii) if it does, there must be an application to backdate the revocation to the date of application for registration, or there must be a finding of special circumstances under s 26(b) or that one of the other exceptions in s 26 applies.

[84] This means that we have upheld ICBs appeal with regard to the effect of s 68(2). Nevertheless, the appeal must be dismissed because special circumstances were found to exist by the Assistant Commissioner.[103] As s 26 overrides s 25(1)(a), this means Johnsons April application can proceed to registration.

So are there zombie marks in New Zealand, or not?

Effectively, the Supreme Court is saying that zombie marks do exist in New Zealand and that timing is absolutely critical, when applying to seek revocation of a New Zealand trade mark registration for non-use.

The Supreme Court suggests that an application for registration of a trade markmust not precede the date of application for revocation, or if it does, must include an application to backdate the revocation to the date before the trade mark application itself was filed. Otherwise there must be a finding of special circumstances for the zombie mark to be removed as an obstruction to registration of the relevant trade mark.

However, a party seeking revocation of a trade mark must be a person aggrievedat the time it files its revocation action.As such the Supreme Courts direction itself is somewhat dangerous, as the revocation applicant may find difficulty establishing that it is indeed is a person aggrieved, if the relevant trade mark registration to be revoked has not actually been raised by IPONZ as an official objection to registration of a trade mark application when seeking revocation of a trade mark registration which would happen if one follows the Supreme Courts direction that an application to register a trade mark must not not precede the date of application for revocation. There have been cases in New Zealand where a party has applied for revocation of a trade mark either on or before it applied to register its own trade mark and the courts have found that the revocation applicant was not a person aggrieved at the time of filing the revocation application[3].

Effectively, the only safe way to proceed New Zealand is to rely upon a series of cascading, separate and independent backdated revocation claims. However, this approach is complex and requires very careful drafting for the initial revocation application.

No one wants to end up discussing zombie marks four times from IPONZ to New Zealands highest court, as Johnson and ICB did in this case. For that reason, if a brand owner plans to file a revocation action against a New Zealand trade mark registration then, in the words of an Australian band who were so good they could have come from New Zealand[4], you better get yourself a lawyer son, you better get a real good one (sic).

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New Zealand's highest court find that zombies do exist in New Zealand after all - Lexology