In Australia, there is no need for a non-use Applicant to establish "standing", in order to apply for removal of a trade mark registration on the grounds of non-use. However a recent New Zealand case reminds brand owners and IP lawyers that the same situation does not apply in New Zealand. Specifically, in New Zealand non-use (aka revocation) proceedings, the revocation applicant must establish that it is a "person aggrieved".
In Confucius Institute Headquarters v Kiddo Entertainment Pty. Limited [2021] NZIPOTM 25 (30 August 2021) an initially unidentified party filed applications for revocation of Confucius Institute Headquarters' registrations for the HSK word mark and logo. The original revocation applications did not name the revocation applicant, nor provide any evidence to support a claim that the revocation applicant was an aggrieved person as required under New Zealand law. Eventually, Kiddo Entertainment Pty. Limited corrected the applications. However, its claim to be an "aggrieved person" was considered by the Assistant Commissioner to be untenable. The Assistant Commissioner noted that this claim "does not identify any practical barrier in trade, and relies solely on a stated intention to apply in the future for registration of marks it does not identify, for goods or services it does not specify. It has not filed any evidence to support its case, and the only evidence is that of the register, which shows that to date it has not made good on its stated intention by filing any further applications for registration of any trade mark."
The Lesson – Why bother?
New Zealand trade mark proceedings are more complex and onerous than their Australian counterpart. Many of the cases I have reviewed over the last three-four years may have had a different result with improved evidence or have been lost (as in this case), by a failure to comply with the administrative and procedural requirements.
New Zealand opposition, revocation and invalidity proceedings are an effective strategic tool for brand owners to use. However just like an electric drill or a chainsaw, it is probably best not to pick up and use New Zealand trade mark proceedings unless you know what you are doing.
Originally published 16 September 2021
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