In October 2020 The Supreme Court of New Zealand, New Zealand's highest court, effectively held that "zombie" trade marks do exist in New Zealand in International Consolidated Business Pty Ltd v SC Johnson & Son Inc [2020] SC 32/2019.
Background
As I discussed in an earlier article of 3 May 20191 SC Johnson and Son Inc (Johnson) applied to register the ZIPLOC trade mark in class 16, for plastic bags and related goods. The Intellectual Property Office of New Zealand (IPONZ) raised International Consolidated Business Pty Ltd's (ICB) earlier registration for the identical ZIPLOC mark as a citation objection. Three days after Johnson applied to register ZIPLOC it applied for revocation of ICB's ZIPLOC registration on the grounds of non-use. IPONZ upheld the action and removed ICB ZIPLOC's registration, clearing the path for Johnson's ZIPLOC mark to be accepted for registration.
Are there "zombie" marks in New Zealand?
As you may know, "zombie marks" are those which were pending or registered at the time a trade mark application is filed, but which are subsequently removed from the register whilst the trade mark application remains alive and kicking (unlike the zombie).
ICB successfully opposed Johnson's ZIPLOC trade mark application, on the basis that ICB's ZIPLOC (revoked) registration was still valid when Johnson applied to register the identical mark, notwithstanding that ICB's registration was removed four days after Johnson's application to register the same mark.
Johnson appealed to the High Court of New Zealand, which used its discretion to backdate removal of ICB ZIPLOC registration to a date before Johnson's own ZIPLOC application. This effectively removed the presence of the zombie mark at the time Johnson applied to register the same mark.
The matter then passed on to the Court of Appeal. Thankfully, the Court of Appeal concluded that "the critical date for consideration of the state of the register is the actual date of entry on the register" (i.e. the date upon which an application proceeds to registration, not the filing date). The Court of Appeal thus concluded that the fact that ICB's ZIPLOC registration existed for three days after Johnson's own ZIPLOC application had no bearing on the validity of Johnson's application.
This is all seemed to be good news. However ICB appealed to New Zealand's highest court, the Supreme Court of New Zealand.
The Supreme Court – "zombie marks" do exist in New Zealand, but...
Effectively, ICB won the battle but lost the war. After extensive consideration the Supreme Court made three crucial findings, consistent with the Singapore Court of Appeal decision in Campomar SL v Nike International Limited [2011] SGCA6:2
"(a) The register is assessed for competing marks as at the date of entry onto the register.
(b) But the date of application remains relevant. There cannot be an identical or similar trade mark belonging to different parties on the register at the same time.[101] This means that an application for registration of a trade mark must:
(i) not precede the date of application for revocation; or
(ii) if it does, there must be an application to backdate the revocation to the date of application for registration, or there must be a finding of special circumstances under s 26(b) or that one of the other exceptions in s 26 applies.
[84] This means that we have upheld ICB's appeal with regard to the effect of s 68(2). Nevertheless, the appeal must be dismissed because special circumstances were found to exist by the Assistant Commissioner.[103] As s 26 overrides s 25(1)(a), this means Johnson's April application can proceed to registration."
So are there "zombie marks" in New Zealand, or not?
Effectively, the Supreme Court is saying that zombie marks do exist in New Zealand and that timing is absolutely critical, when applying to seek revocation of a New Zealand trade mark registration for non-use.
The Supreme Court suggests that an application for registration of a trade mark must not precede the date of application for revocation, or if it does, must include an application to backdate the revocation to the date before the trade mark application itself was filed. Otherwise there must be a finding of "special circumstances" for the zombie mark to be removed as an obstruction to registration of the relevant trade mark.
However, a party seeking revocation of a trade mark must be a " person aggrieved" at the time it files its revocation action. As such the Supreme Court's direction itself is somewhat dangerous, as the revocation applicant may find difficulty establishing that it is indeed is a "person aggrieved", if the relevant trade mark registration to be revoked has not actually been raised by IPONZ as an official objection to registration of a trade mark application when seeking revocation of a trade mark registration– which would happen if one follows the Supreme Court's direction that an application to register a trade mark must not "not precede the date of application for revocation". There have been cases in New Zealand where a party has applied for revocation of a trade mark either on or before it applied to register its own trade mark and the courts have found that the revocation applicant was not a "person aggrieved" at the time of filing the revocation application3.
Effectively, the only safe way to proceed New Zealand is to rely upon a series of cascading, separate and independent "backdated" revocation claims. However, this approach is complex and requires very careful drafting for the initial revocation application.
No one wants to end up discussing zombie marks four times from IPONZ to New Zealand's highest court, as Johnson and ICB did in this case. For that reason, if a brand owner plans to file a revocation action against a New Zealand trade mark registration then, in the words of an Australian band who were so good they could have come from New Zealand4, "you better get yourself a lawyer son, you better get a real good one" (sic).
Footnotes
2 International Consolidated Business Pty Ltd v SC Johnson & Son Inc [2020] SC 32/2019, paras 83-84
3 "Therefore, it appears that, as at the application date...this trade mark application could not form a basis on which the applicant's aggrieved person's status could rest because the trade mark application was filed on the same date on which each of the applications for revocation were filed" – Tui AG v DB Breweries Limited [2010] NZIPOTM 31 (21 December 2010); https://dcc.com/services/trade-marks/does-a-recent-nz-trade-mark-revocation-decision-raise-the-bar-too-high-for/
4 The Cruel Sea, Better get a lawyer (1994).
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