A New Zealand brand owner has had to appeal its own successful trade mark non-use revocation action to kill off a "zombie" trade mark in New Zealand, in Blink Cameras Limited v Flexirent Capital Pty Limited [2022] NZHC1653 (13 July 2022).
Brand owner succeeds, but has to appeal anyway
Blink Camera Limited (BCL) applied to register its trade mark BLINK in October 2020. As the Intellectual Property Office of New Zealand (IPONZ) had cited Flexirent Capital Pty Limited's (Flexirent) prior registration of the mark BLINK SWITCH as an objection to registration of BLINK, BCL applied to revoke the BLINK SWITCH mark, in an action filed on 25 July 2021. BCL's revocation action sought to have the BLINK SWITCH mark removed from either 19 February 2017 or "the first in time of the earliest date possible, and 25 July 2021". Flexirent did not challenge the revocation action. As such, the Assistant Commissioner agreed that the mark should be removed but stipulated the removal date of 25 July 2021.
BLINK SWITCH is removed so what's the problem?
In Australia, a brand owner in BCL's position would be satisfied with the revocation decision, as the cited former mark would no longer obstruct registration of BCL's own trade mark application.
However, this is Aotearoa New Zealand. Sadly, and for reasons best left to the Supreme Court of New Zealand, "zombie marks" do exist in New Zealand, as I reported in December 2020 (New Zealand's highest court find that "zombies" do exist in New Zealand after all). To refresh from that case note, "zombie marks" are those pending or registered at the time a trade mark is filed, which are subsequently removed from the Register, whilst the trade mark application remains alive and kicking (unlike the zombie).
In this case BCL found itself in the unfortunate position that the revoked BLINK SWITCH trade mark was still on the Register when BCL's BLINK mark was filed, notwithstanding that it was effectively removed a few months later. In light of the Supreme Court of New Zealand's ruling in the Ziploc case, BCL had to appeal its own (successful!) revocation action, in order to secure an earlier revocation date.
The High Court happily obliged, and backdated the revocation of BLINK SWITCH back to 19 February 2017.
Could BCL have done anything else?
BCL could perhaps have saved the time and cost of an appeal by simply seeking to have IPONZ withdraw the citation objection under "special circumstances". However BCL's BLINK registration may have been vulnerable to a validity challenge, due to the existence of the BLINK SWITCH "zombie" and potential claims that special circumstances did not exist. Furthermore, as the appeal of a New Zealand trade mark case is not de novo, the cost of an appeal in an uncontested case such as this would probably have been quite low.
Who would have thought that zombies could cause so many problems?
New Zealand may not have poisonous snakes or spiders (unlike Australia), but at least Australia does not have zombie (marks) wandering around.
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