International Consolidated Business Proprietary Ltd v SC Johnson & Son Incorporated

• Jurisdiction: New Zealand
• Judge: Glazebrook J
• Judgment Date: 15 October 2020
• Neutral Citation: [2020] NZSC 110
• Court: Supreme Court
• Docket Number: SC 32/2019
• Date: 15 October 2020

Between

International Consolidated Business Proprietary Limited

Appellant

and

SC Johnson & Son Incorporated

Respondent

[2020] NZSC 110

Court:

Winkelmann CJ, Glazebrook, O'Regan, Ellen France and Williams JJ

SC 32/2019

IN THE SUPREME COURT OF NEW ZEALAND

I TE KŌTI MANA NUI

Intellectual Property — appeal against a Court of Appeal decision which held that the respondent's application for registration of a trade mark could proceed to registration because the register was judged at the time a mark was entered — the respondent had applied to have the appellant's “ZIPLOC” trade mark revoked and then applied to register the mark — when was the state of the register assessed for the purpose of ascertaining whether there were competing marks — was the appellant still the owner of the mark when the respondents submitted an application — effect of backdating provisions under s68(2) — aligning with the position in the United Kingdom and Singapore — Trade Marks Act 2002 — Trade Marks Act 1953

Counsel:

G C Williams for Appellant

G F Arthur and K McHaffie for Respondent

• A The appeal is dismissed.

• B The appellant must pay the respondent costs of $10,000 plus usual disbursements.

JUDGMENT OF THE COURT

REASONS

(Given by Glazebrook J)

Table of Contents

	Para No.
Introduction	[1]
Issues	[10]
The legislation	[11]
Decisions below	[20]
Assistant Commissioner's decision	[21]
High Court decision	[23]
Court of Appeal decision	[24]
Submissions	[31]
ICB's submissions	[32]
Johnson's submissions	[35]
When is the state of the register assessed?	[37]
Is the application date still relevant?	[47]
Was ICB the owner of the ZIPLOC trade mark at the date of Johnson's April application?	[61]
Assistant Commissioner's decision	[61]
High Court decision	[63]
Court of Appeal decision	[64]
Our assessment	[65]
What is the effect of s 26?	[67]
The legislation	[67]
Assistant Commissioner's decision	[72]
High Court decision	[74]
Court of Appeal decision	[75]
ICB's submissions	[76]
Johnson's submissions	[78]
Our assessment	[79]
Conclusion	[83]
Result	[85]

Introduction

1 The issue in this appeal is whether the trade mark application 975954 for ZIPLOC by SC Johnson & Son Inc (Johnson) should proceed to registration.

2 International Consolidated Business Pty Ltd (ICB) held a registered trade mark (648953) for ZIPLOC from 8 June 2006, with a deemed date of registration of 22 November 2001. Johnson filed a revocation application against ICB's trade mark 648953 on 22 April 2013. On 26 June 2014, that trade mark was revoked for non-use as at 22 April 2013. 1

3 Three days before Johnson's revocation application was filed, on 19 April 2013, Johnson applied to register the trade mark 975954 (Johnson's April application). ICB filed a further application for registration of the mark on 26 September 2014 (ICB's September application). 2

4 Because it was filed later than Johnson's April application, ICB's September application was held in abeyance pending processing of Johnson's April application. 3

5 ICB opposed Johnson's April application for registration on four grounds. Two of these remain relevant for this appeal:

• (a) the application for registration was not made by a person who at the relevant date was the owner or proprietor of the mark as required by s 32(1) of the Trade Marks Act 2002 (the 2002 Act); and

• (b) the mark was identical to a trade mark which at the relevant date belonged to a different owner, namely ICB, registered in respect of the same goods, contrary to s 25(1)(a) of the 2002 Act.

6 In a decision of 17 January 2017, the Assistant Commissioner of Trade Marks held that Johnson's application should not proceed to registration because, at the date of Johnson's April application, ICB was still the registered owner of its ZIPLOC mark. 4 While she held there to be special circumstances under s 26(b) of the 2002 Act, this did not, in her view, remove the ownership impediment to Johnson's registration. 5

7 This decision was partially overturned by the High Court and the matter was remitted to the Assistant Commissioner for further determination of the ownership issue. 6

8 The Court of Appeal, however, held that Johnson's April application could proceed to registration because the register is judged at the time a mark is entered

onto the register and not at the time of application. 7 This conclusion largely rested on its interpretation of s 68(2) of the 2002 Act

9 This Court granted ICB's application for leave to appeal on 9 July 2019. 8 The approved question was whether the Court of Appeal interpreted s 68(2) of the 2002 Act correctly. Leave on wider ownership questions was refused. But it was accepted that leave encompassed what the legal position would be if this Court holds that the Court of Appeal's interpretation of s 68(2) was incorrect.

Issues

10 The issues in the appeal are:

• (a) When is the state of the register assessed for the purpose of ascertaining whether there are competing marks?

• (b) Does the application date for a mark remain relevant if the answer to (a) is that the register is assessed at the date of entry onto the register?

• (c) Was ICB the owner of the ZIPLOC trade mark at the date of Johnson's application?

• (d) What is the effect of s 26 of the 2002 Act?

The legislation

11 We set out the provisions of the 2002 Act relevant to the first two issues.

12 “Owner” is defined in s 5(1) as follows:

owner,—

(a) in relation to a registered trade mark that is not a certification trade mark or a collective trade mark, means the person in whose name the trade mark is registered; and

…

(d) in relation to an unregistered trade mark, means the person who owns all of the rights in the mark

13 Section 13 provides:

13 When trade mark registrable

(1) If all the requirements set out in subsection (2) are met, a trade mark is registrable under this Act in respect of the following:

• (a) particular goods or services within 1 or more classes:

• (b) particular goods and services within 1 or more classes.

(2) The following requirements must be met:

• (a) an application for the registration of the trade mark must be made in accordance with this Act:

• (b) all prescribed fees, if any, must be paid in respect of the application:

• (c) the Commissioner must be satisfied that there are no absolute or relative grounds set out in this Part that would prevent the registration of the trade mark.

14 Section 32(1) addresses how applications must be made. It provides:

(1) A person claiming to be the owner of a trade mark or series of trade marks may, on payment of the prescribed fee (if any), apply in the prescribed manner (if any) for the registration of the trade mark or series of trade marks used or proposed to be used in respect of the following:

• (a) particular goods or services within 1 or more classes:

• (b) particular goods and services within 1 or more classes.

15 The phrase “claiming to be the proprietor” was present in s 26(1) of the immediately preceding Act, the Trade Marks Act 1953 (the 1953 Act). Section 32(1) of the 2002 Act as originally introduced did not have a similar phrase. The words “claiming to be the owner” were inserted in 2005 to clarify that it is the “owner of the trade mark who applies for its registration”. 9

16 Section 44 addresses the abandonment of applications for registration. It provides:

44 Abandonment of application

(1) If, within the time specified by the Commissioner, the Commissioner does not receive a response from the applicant to a notification under section 41, the Commissioner must treat the application as abandoned.

(2) The Commissioner must not treat an application as abandoned under subsection (1) if the application is awaiting the outcome of—

• (a) opposition proceedings in respect of a prior application; or

• (b) cancellation, revocation, or invalidity proceedings in respect of a prior registration.

17 Sections 66 and 68 address revocation of registration of a trade mark. Section 66 provides in relevant part: 10

66 Grounds for revoking registration of trade mark

(1) The registration of a trade mark may be revoked on any of the following grounds:

(a) that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered:

…

(1A) For the purposes of subsection (1)(a), continuous period means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation.

(2) However, despite subsection (1), a trade mark may not be revoked for its non-use if its non-use is due to special circumstances that are outside the control of the owner of the trade mark.

(3) The registration of a trade mark must not be revoked on the ground in subsection (1)(a) if that use is commenced or resumed

after the expiry of the 3-year period and before the application for revocation is made.

(4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 3-year period but within the period of 1 month before the making of the application for revocation must be disregarded unless preparation for the commencement or resumption began before the owner became aware that the application may be made.

18 Section 68 provides in relevant part: 11

68 Revocation of registration of trade mark

…

(2) If the registration of a trade mark is revoked to any extent, the rights of the owner, to that extent, cease on—

• (a) the date of the application for revocation of the registration of the trade mark; or

• (b) if...