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 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”.
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 mark … that 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.
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.
ONLY CC’S IS TASTING LIKE THESE
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.