Rights in trade marks can be acquired in two ways: by
use and by registration. But regardless of how you obtain your
rights, if you don't use your mark you may lose your
So what does 'use' mean?
One way to establish what 'use' means is to look at the
'test' for 'use' in proceedings for removal of a
trade mark from the Trade Marks Register.
Under New Zealand law we apply the test from a High Court of
Australia decision (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No
2)  HCA 73; (1984) 156 CLR 414):
"...it is not necessary that there be an actual dealing in
goods bearing the trade mark before there can be a local use of the
mark as a trade mark. It may suffice that imported goods which have
not actually reached [New Zealand] have been offered for sale in
[New Zealand] under the mark ... or that the mark has been used in
an advertisement of the goods in the course of trade: ... In such
cases, however, it is possible to identify an actual trade or offer
to trade in the goods bearing the mark or an existing intention to
offer or supply goods bearing the mark in trade."
Thus 'use' means actual sales or an offer to sell goods
or services by reference to a particular trade mark in New Zealand.
Preliminary discussions or negotiations about selling goods or
services (ie using the trade mark) will not be sufficient; neither
will be a trade mark owner's1 subjective intention
to use its mark in trade at some undefined time in the future.
An importer does not have to show it has sold anything in New
Zealand to show it has 'used' a trade mark. However, the
importer must be able to show that goods overseas have been
committed to export to New Zealand – for example, by
producing a bill of lading – and that the goods have been
offered for sale or advertised for future sale in New Zealand.
In summary, then, if the owner of a trade mark registration
can't show actual sales or offers for sale using its trade mark
it may well lose its registration.
One such owner was Bickford's Trading Pty Limited. In a
recent decision (Bickford's Trading Pty Ltd v Tata Sons Limited
 NZIPOTM 5 (30 January 2013), the Assistant Commissioner of
Trade Marks ordered Bickford's trade mark registrations for
WATER+, WATERPLUS and waterplus (logo) in respect of non-alcoholic
drinks be removed from the Trade Marks Register.
Tata Sons had applied to register TATA WATER PLUS as its trade
mark but found Bickford's registrations were blocking its
mark's path. Tata Sons consequently applied to remove
Bickford's registrations from the Register. Tata Sons'
application2 succeeded because the Assistant
Commissioner found the use Bickford's claimed it had made of
its 'Waterplus' trade marks did not the pass the test in
Moorgate Tobacco Co Ltd.
If a business loses a trade mark registration, it doesn't
automatically mean it can't start re-using the trade mark
(although if it does it may find it is infringing a new owner's
rights). Nor does it automatically mean it is open season for a
competitor to immediately start using the trade mark: the original
owner may have 'residual rights' in that mark whereby
consumers still associate that mark with the original owner, even
if the owner is no longer using it. If the original owner can
establish such residual rights it may still be able to stop a
competitor from using (and registering) an identical or confusingly
similar trade mark.
1A legal term to describe a person entitled to
make an application for a patent. In New Zealand
this includes any person claiming to be the true and first
inventor, the assignee of the inventor, or the legal
representative of a deceased inventor or his/her
assignee. 2In most jurisdictions patent applications are
subjected to an examination process to determine whether
the subject matter is novel and inventive. The
terms "application", "pending" or "patent
application" are used to describe the status of the
application up to grant.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James & Wells Intellectual Property, three time winner
of the New Zealand Intellectual Property Laws Award and first IP
firm in the world to achieve CEMARS® certification.
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