Recent Trade Mark Decisions

Lacoste [2015] NZIPOTM 7 (25 June 2015) lacoste1


A notice of intention to reject issued under section 43 of the Trade Marks Act 2002 in respect of trade mark application number 998331 in the name of Lacoste.  The Commissioner directed that a halt of 6 months be placed on application no. 998331 pending a decision regarding the cited trade mark owned by Crocodile International Pty Ltd.  The cited trade mark status should be reviewed 10 days before the end of that period to assess if a further halt should be put in place.

Point of Interest – the Sandwich Principle

The Commissioner considered the long-standing and ongoing proceedings between Lacoste and Crocodile International Pte Ltd in respect of the CROCODILE and lacoste2 trade marks.  Lacoste argued special circumstances applied to enable registration of the current trade mark as it is the owner of a significant number of registered trade marks in New Zealand and had provided evidence of use of its trade marks in New Zealand.  Lacoste argued application no. 998331 is registrable under section 26(b) due to special circumstances which “makes it proper for the trade mark to be registered”.  This is referred to as the “sandwich” principle (which echoes the 1953 Act argument of Equity on the Register).  The “sandwich” principle holds that a later filed application can be registered because an earlier registration creates a right despite other similar trade marks filed by others in between the two applications.

Commissioner found that current proceeding is part of the wider disputes between Lacoste and Crocodile International Pte Ltd and advised that caution should be exercised “not to ‘muddy the waters’ before the courts have had the opportunity to determine those matters”.  Regulation 28 allows the Commissioner discretion to place matter under a Halt.  Therefore, while Lacoste has declined to put this application into abeyance, the Commissioner considered it in the public interest to instil a Halt to ensure the Lacoste-Crocodile International Pte Ltd disputes are “managed in a holistic, co-ordinated and systematic fashion (which includes the cited application being determined prior to the current application)”.

Commissioner further comments that the “sandwich” principle forms part of a draft Practice Guideline not yet published by the Office.  In its present format, the requirements are that “the applicant’s earlier filed mark and the intervening (cited) mark both had to be registered, and the applicant’s later (applied for) mark had to be the same or a substantially identical mark to its earlier trade mark registration (rather than being the same or a very similar mark)… substantially identical in this context means not materially different”.


Anthony Christopher Gibbs v Westland Milk Products IP Limited and Easiyo Products Limited [2015] NZIPOTM 8 (8 July 2015)


Opposition by Westland Milk Products IP Limited and Easiyo Products Limited to application no. 969296 Dairy-Yo in class 29 in the name of Anthony Christopher GIBBS.  The Commissioner held that “having regard to the reputation acquired for the EasiYo markthat the Dairy-Yo mark, if used in a normal and fair manner in connection with the opposed goods, would not be reasonably likely to cause confusion or deception amongst a substantial number of persons”.  Opposition does not succeed on any grounds and the Commissioner directed that Dairy-Yo should be registered.

Point of Interest – Status of the Opponents

Preliminary issue raised regarding status of the opponents.  The notice of opposition identifies “the Opponent” as “Westland Milk Products IP Limited / Easiyo Products Limited”.  The Opponent is also claimed as the owner of trade mark registration nos. 218842 and 218843.   The registrations are registered in the name of Westland Milk Products IP Limited, struck off the New Zealand Company Register in 2011.

At the Hearing a chain of title to the current opponents was outlined including reference to a 2014 assignment recorded to correct the Register.  However, in order to lodge an opposition an opponent must be a legal person and because Westland Milk Products IP Limited was struck off on the date of opposition, it could not be a legal person and therefore could not be an opponent.  Easiyo Products Limited is also identified as an opponent and qualifies as a legal person.  The Commissioner held the opposition could continue in the name of Easiyo Products Limited.

The grounds of opposition claimed including that use of Dairy-Yo is likely to deceive or cause confusion; and/or is contrary to law because of breaches of the Fair Trading Act and passing off (section 17(1)(a) and (b)); that Dairy-Yo is similar to registered trade mark EASIYO and likely to deceive and confuse (section 25(1)(b)); and/or that Dairy-Yo is identical/similar to opponent’s well known trade mark (section 25(1)(c)).

Commissioner held that because Easiyo Products Limited does not own the trade mark registrations, it has no standing to plead the section 25(1)(c) ground.  There is nothing in the statute which requires the opponent to also be the owner of the trade marks for the remaining grounds of opposition so Easiyo Products Limited is entitled to bring the opposition on those grounds.


Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 (9 July 2015)


Application for Removal for non-use by Griffin’s Foods Limited (“Griffins”) of registrations in the name of Bluebird Foods Limited (“Bluebird”).  Commissioner held Griffins is an aggrieved person, Bluebird has not used the marks during the relevant period and has not established that its non-use of the marks was due to special circumstances.  However, under the Commissioner’s discretion trade mark nos. 149111, 173987, 173988, 293733, 293734, 316068, 316069, 752029, and 752033 are to remain on the register.

Number 149111 173987173988 293733293734 316068316069 752029  752033
TradeMark  ccs1  ccs2 ONLY CC’S IS TASTING LIKE THESE  ccs3 CC  ccs4

Point of Interest – Exercise of Commissioner’s Discretion

Special circumstances for non-use were raised pointing to problems of supply and quality control (including because of an infestation of weevils).  The Commissioner held there was insufficient evidence to show the extent and effect of these circumstances on Bluebird and therefore no special circumstances were established.

Bluebird submitted use of the trade mark after the end of the non-use period identified in the removal action was evidence of an intention to use the trade marks and efforts to prepare for that use during the relevant period.  The Commissioner held that while this evidence did not help Bluebird establish use during the relevant period, it did go towards the exercise of discretion which was “influenced by the fact that Bluebird did not abandon its marks; the evidence that there is a residual reputation in the marks despite the period of dormancy; and the fact that no one would be deceived or confused if the marks were to remain on the register in the name of Bluebird Foods Limited – in fact, the opposite may be true”.

The Commissioner also referred to allegations from Bluebird that Griffins had no bona fide intention to use the CC’s trade mark in good faith, however found that in the face of no evidence filed by Griffins, that allegation could not be assessed.

Frequently Asked Questions about Protecting Your Trade Mark on Tropical Islands

Advances in communication and travel have opened trade routes and access for consumers and traders across many industries.  Commerce in far-flung islands is no longer hampered by distance and a number of island states are now establishing their own intellectual property laws.  It is increasingly important to bear in mind the development of National trade mark laws particularly in countries where formal trade mark rights have been dependent on overseas registrations.

These are some of the countries where we have recently been asked how best to protect trade mark rights:

The British Virgin Islands allocates registered trade mark rights through an extension of an existing UK trade mark application.  The resulting British Virgin Islands registration is dependent on the UK base registration and any changes to the UK base registration must also be made to the British Virgin Islands registration The British Virgin Islands Trade Marks Act 2013 comes into force on 1 September 2015. Once the new Act is in force, trade mark registrations in the British Virgin Islands must be secured through a registration filed on a National basis.

French Polynesia has historically been covered by an extension of the French National registrations.  The extension of those rights is no longer automatic.  Older National registrations will continue to cover French Polynesia but National applications filed between 3 March 2004 and 31 January 2014 require separate validation if French Polynesia is to be covered.  National trade mark applications filed after 31 January 2014 require the owner to opt in to coverage in French Polynesia, if it is desired.

Vanuatu previously required an existing UK trade mark application or registration as a base to secure a Vanuatu trade mark right.  The Trade Marks Act 2011 transfers any rights secured under this system to National Vanuatu trade mark rights.  Trade mark applications should now be filed under the new Act and re-registration of a UK registration is no longer possible.

The Marshall Islands was once a US territory and trade mark rights were covered by US legislation.  No National legislation has been adopted since the Marshall Islands secured full sovereignty in 1986 so at the moment trade mark registrations cannot be secured.  Trade mark rights in the Marshall Islands depending upon common law rights and publication of cautionary notice is recommended to draw attention to those rights.

The Cook Islands was covered by the New Zealand Trade Marks Act 1953.  However, when that legislation was repealed and replaced by the 2002 Act, reference to the Cook Islands was removed.  Nothing was included in the 2002 Act to address transfer of trade mark registrations which used to cover the Cook Islands or to cover new trade mark rights sought in the Cook Islands.  At the moment there are no mechanisms to register trade mark rights in the Cook Islands so traders need to rely on their common law rights.  Publication of cautionary notices are recommended to draw attention to those rights.

Tuvalu, Kiribati and the Solomon Islands still operate under a system of re-registration based upon a registration in the UK.  The registration is valid for the duration of the UK registration and renewable once the UK registration is renewed.

This list is by no means exhaustive and we recommend on-going review with our network of local agents as the law continues to develop.