Convention priority must be considered before registrability

New Zealand

In Unilever Plc v The Commissioner of Trademarks (Case CIV 2006-485-1208, July 20 2007), the High Court of New Zealand has held that a claim of prior rights under the Paris Convention for the Protection of Industrial Property must be considered before issues of registrability when two marks are in conflict.

On October 27 2005 Unilever applied to register in New Zealand the mark DOVE SUMMER GLOW in Class 3 of the Nice Classification. On December 6 2005 Neutrogena applied to register SUMMER GLOW and claimed Paris Convention priority from a US application dated August 21 2005.

The Intellectual Property Office of New Zealand (IPONZ) accepted the Unilever application, but it later revoked its acceptance when Neutrogena filed its mark, as provided for under Section 42 of the Trademarks Act. Unilever requested a hearing.

At the hearing Unilever argued that Neutrogena's application was not distinctive and would never reach acceptance or registration and for that reason Unilever's acceptance should not have been revoked. The hearings officer ruled that the scheme of the legislation required the priority of trademarks to be dealt with before registrability. Unilever appealed to the High Court claiming that the hearings officer should have considered the registrability of Neutrogena's mark and had not done so. Neutrogena acted as an intervener to the appeal.

Unilever presented two arguments to the High Court. Firstly, it claimed that considering priority before registrability would result in unnecessary expense because Neutrogena's mark is not registrable and would not survive initial consideration by IPONZ. The High Court dismissed this argument, stating that it failed to see any significant difference: in one scenario Unilever's mark could be accepted first and then opposed, and in the other Neutrogena's mark could be accepted and then opposed.

Unilever's second argument relied on Re Carter Medicine Cos Trademarks ((1892) 3 Ch D 472) as authority for the point that the discretion to revoke acceptance should only be exercised if the earlier mark is registrable.

In Carter Medicine counsel for Carter Medicine argued that the UK legislation was to be interpreted as meaning that its application in the United States to register the word 'pills' meant that it was entitled to have the word registered in the United Kingdom. In Carter Medicine Justice North rejected the argument that the existence of an application in the United States automatically meant that the application was entitled to registration in the United Kingdom. The High Court ruled that Carter Medicine is not an authority for the idea that registrability must be considered before priority.

The High Court agreed with the hearings officer's that the scheme of the legislation dictates that priority must be dealt with before registrability. It remains to be seen how IPONZ will deal with the Neutrogena application and subsequently with the Unilever application.

Kate Duckworth, Baldwins, Wellington

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