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Trade Mark Registration - Use it Lose it

22 May 2017

Protecting a trade mark through registration on the New Zealand Trade Marks Register is becoming increasingly common. Once registered however, trade mark owners (or their licensees) must regularly use the trade mark in its registered form or risk the registration being revoked from the Trade Marks Register. In New Zealand, a trade mark registration can be revoked if it is not used by its owner (or their licensees) for a continuous period of three years or more from the date of registration.

The case of Crocodile International Pte Ltd v Lacoste [2017] NZSC 14 is the final chapter in a lengthy legal battle between the two companies which has progressed through the New Zealand Courts. The case has been to establish whether Lacoste’s ‘use’ of its registered trade mark has met the legislative threshold to allow the mark to remain registered on the Trade Marks Register.

Lacoste is the owner of a combination mark (a trade mark that includes both a word and an image). This trade mark includes the word ‘Crocodile’ with the image of a crocodile. Crocodile International Pte Limited filed to revoke the mark on the basis that Lacoste had only used the image of the crocodile as a trade mark (without the word).

Both the High Court and the Court of Appeal decisions held that the use of the image without the word ‘Crocodile’ still counted as ‘use of the mark’ as ‘the crocodile image was the dominant element of the mark.

The Supreme Court overturned the decisions of the High Court and Court of Appeal in relation to this issue. It was made clear by the Supreme Court that if a trade mark is not used in essentially the same form in which it is registered, then the trade mark will be revoked from the register (subject to special circumstances). The Supreme Court clarified the definition of “use” as being use of the mark in a manner which does not alter the distinctive character of the trade mark in the form in which it was registered.

The Supreme Court also addressed the issue of the Trade Mark Commissioner’s discretionary authority to allow a trade mark to remain registered despite not being used continuously for three years or more from the date of registration. The previous trade mark legislation (Trade Marks Act 1953), provided the Commissioner with discretion to maintain a registration where the owner could prove they faced special or exceptional circumstances which prevented them from being able to use the mark (i.e. World War II). However, the threshold for what was a ‘special or exceptional’ circumstance was for the Commissioner to decide. The Trade Marks Act 2002, however, removed this statutory discretion.

It is essential for all registered trade mark owners to know their obligations following this decision. In short, a trade mark owner must be mindful that they use their mark as it is registered on the New Zealand Trade Marks Register. Failure to use the mark may result in the registration being lost through revocation.

 

Shelley Slade-Gully is a Senior Associate in the Commercial Corporate team at Norris Ward McKinnon. You can contact Shelley at shelley.sladegully@nwm.co.nz

 

Shelley Slade-Gully