CTBAT International Co. Limited (“CTBAT”) filed a non-use revocation action against Registration No. 607819 DOUBLE HAPPINESS owned by N.V. Sumatra (“Sumatra”).
Relevant to the matter is that in New Zealand, the applicant for removal must demonstrate that, on the balance of probabilities, it is an “aggrieved person” (section 65 of the Trade Mark Act 2002). The main issue in this case was whether CTBAT qualified as an “aggrieved person”.
The Assistant Commissioner pointed out that the requirement for an applicant for revocation to be an “aggrieved person” has been removed in the United Kingdom and in Australia. However, while the Assistant Commissioner noted that the term “aggrieved person” must be afforded a wide and liberal interpretation, it was also recalled that the requirement is still in place in New Zealand.
CTBAT’s position was that being a trade rival of Sumatra should be sufficient to establish its standing as an aggrieved person. However, applying the longstanding “legal or practical disadvantage test” from the Australian Ritz Hotel case (The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 (NSZSC)), the Assistant Commissioner was not satisfied that, as at the date of filing the revocation action, there was a reasonable possibility of CTBAT being appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified.
The Assistant Commissioner found that CTBAT was not an aggrieved person, and therefore did not have standing to revoke the DOUBLE HAPPINESS trade mark.
Having made that determination, and for completeness, the Assistant Commissioner set out her views on the substantive application. She noted that Sumatra made genuine use of its trade mark during the relevance period. Further, and contrary to CTBAT’s submissions, the Assistant Commissioner pointed out that there is no discretion to revoke a trade mark when genuine use is established.
Trade Mark Registration No. 607819 is to remain on the Register.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.