High Court interprets Section 66 of Trademarks Act

New Zealand
In Heinz Wattie’s Limited v Goodman Fielder Consumer Foods Pty Limited (CIV 2007-404-6946, December 10 2008), the High Court of New Zealand has considered whether an applicant for revocation for non-use could add an additional ground following the emergence of new evidence. 
In 2005 Goodman Fielder Consumer Foods Pty Limited applied for the revocation of the trademark PRAISE on the basis of Section 66(1)(a) of the Trademarks Act 2002 - namely, that a continuous period of three years or more had elapsed during which the trademark had not been put to genuine use. 

In 2007 the matter was heard by the assistant commissioner of trademarks. She ruled that there had been no use under Section 66(1)(a) and ordered that the trademark be revoked. 

The owner of the mark, Heinz Wattie’s Limited, appealed in late 2007 and filed an interlocutory application to file further evidence demonstrating that Heinz Wattie’s had resumed use of the mark in mid-2006, which was after the date of the application for revocation. The evidence was relevant to Section 66(1)(b), which provides that a registration can be revoked if use has been suspended for an uninterrupted period of three years. Heinz Wattie’s sought to rely on Section 66(3), which provides that a mark must not be revoked if use is commenced or resumed after the expiry of the three-year period and before the application for revocation is made. 
Goodman applied to amend the application for revocation to include Section 66(1)(b). The application was opposed by Heinz Wattie’s, which considered that Goodman should apply to the Intellectual Property Office of New Zealand to amend the original application for revocation. The assistant commissioner responded by stating that she was functus officio and declined to deal further with the issue.
On appeal, the High Court allowed the amendment to the application for revocation to include Section 66(1)(b). It held that at the time of applying for the revocation of a mark on the grounds of non-use, an applicant is unlikely to know all of the facts relevant to use or otherwise. According to the court, such knowledge was in the mind of the trademark owner, and would emerge only during the evidence phase. Any failure to particularize the statutory basis for seeking revocation would not make an application for revocation invalid or ineffective. The court further held that there was no good reason why it should not be open for an applicant who advanced only one ground to include a further ground if the evidence emerged to support it. The role of the court was to put itself in a position to deal with the real controversy between the parties.
The court also noted the public interest in ensuring that the Trademarks Register be kept free of trademarks which are not in use. Heinz Wattie’s submitted that it was entitled to take advantage of the fact that Goodman had not initially sought revocation on the basis of Section 66(1)(b), and sought to rely on Section 66(3). The court was critical of this approach, holding that Heinz Wattie’s deliberately and cynically delayed filing evidence to show how the trademark was used in order to defeat the application for revocation and maintain its mark on the register.
The court thus allowed Goodman to include Section 66(1)(b) as a ground for revocation and the substantive appeal will proceed on that basis. 

Kate Duckworth, Baldwins, Wellington

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