Applicants for revocation reminded that they must be “aggrieved persons”

New Zealand

Under Section 65 of the Trademarks Act 2002, an "aggrieved person" may apply to the commissioner of trademarks or the court for the revocation of the registration of a trademark. There is no guidance in the act as to what makes a person “aggrieved”. However, case law has established that the issue of who is an aggrieved person under the act is to be given a liberal or wide interpretation. The core question is whether there is a reasonable possibility of the applicant for revocation being appreciably disadvantaged by the registration in question remaining on the Register.

The simplest and most common method of establishing that an applicant for revocation is an aggrieved person is for the applicant to show that the relevant registration has been cited against a later-filed application for registration made by the applicant - that is, the registration is effectively blocking the applicant’s application for registration. Alternatively, or in addition, the applicant for revocation may be able to show that the presence of the registration in question on the Register adversely impacts on the applicant’s ability to market or provide goods or services under the same or a confusingly similar mark.

Both options were considered in Tui AG v DB Breweries Limited ([2010] NZIPOTM 31, December 21 2010). DB Breweries Limited, owner of the well-known TUI trademark for beer, applied to revoke on the grounds of non-use four registrations for the mark TUI and the TUI logo, owned by Tui AG, covering goods in Class 16 and services in Class 39 of the Nice Classification. The applications for revocation were filed on June 12 2009.

Tui refuted DB’s argument that it was an aggrieved person as at the date the applications for revocation were filed. In particular, Tui submitted that there was not a sufficient proximity between DB’s business (primarily the making and sale of beer) and the goods and services covered by Tui’s registrations.

DB argued that it was an aggrieved person for the following reasons.

First, Tui’s registrations in Class 16 would block DB’s application to register the trademark TUI in Class 16, filed on the day of the hearing, and would impact on DB’s "marketing, promotion and provision of future goods and services under DB’s TUI trademark". The assistant commissioner held that a subject registration must be raised as a citation against the applicant’s application for revocation before the application for revocation is filed. In the present case, DB’s application for registration was filed after the applications for revocation were filed. Consequently, as at the relevant date, DB was not an aggrieved person in respect of Tui’s Class 16 registrations. Equally, it was held that, although DB could show evidence of use of its TUI mark in relation to billboards (described as displaying “funny, topical and generally tongue-in-cheek messages”) and books publishing examples of its best slogans, DB was not an aggrieved person as there was no evidence that Tui had hindered DB’s use of its TUI mark in relation to Class 16 goods, nor had Tui threatened to hinder DB’s use relying on the registered marks.

Second, DB argued that Tui’s registrations in Class 39 were blocking DB’s application to register the trademark TUI in Class 39, filed on June 2 2009, and would impact on DB’s "marketing, promotion and provision of future goods and services under DB’s TUI trademark". Here, the assistant commissioner held that DB’s application for registration did form the basis on which DB was an aggrieved person for the purposes of the applications for revocation filed in respect of Tui’s Class 39 registrations. However, Tui was able to show that it had used its TUI marks during the relevant period in respect of the registered services. Therefore, DB’s application for revocation was unsuccessful.

The requirement that an application for revocation can be filed only by an aggrieved person is one that has been viewed by applicants in the past as a minor detail, but is clearly still an essential step for a successful application for revocation.

It is notable that the requirement that a revocation application could be filed only by an aggrieved person was removed in Australia in 2006, on the basis that it was contrary to the intention of the revocation section for an unused mark to remain on the Register. Unfortunately, although minor amendments have been proposed in relation to New Zealand’s revocation section in the Trademarks (International Treaties and Enforcement) Amendment Bill, there appears to be no similar move in New Zealand to allow anyone to lodge an application for revocation.

Rachel Dawson and Carrick Robinson, James & Wells Intellectual Property, Christchurch and Auckland

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