This matter concerned an application for removal filed by Genius against Scholz’s New Zealand Registration No. 739987 KITCHEN GENIUS.
To succeed in a New Zealand removal action, the removal applicant must first establish that it is an “aggrieved person”. On this point, the Assistant Commissioner noted that Genius failed to provide a copy of the Compliance Report that would have attested to its aggrieved status as the owner of a trade mark application that is being prevented registration due to a prior registration (in this matter, the KITCHEN GENIUS trade mark registration). Nevertheless, the Assistant Commissioner was satisfied that Genius was suitable aggrieved.
Turning to the substance of the matter, Scholz led evidence that it licenced a third party to use the KITCHEN GENUIS trade mark. Within its evidence, Scholz included invoices from its licensee’s distributor (essentially a fourth party to the matter) issued to customers in New Zealand demonstrating that sales of the KITCHEN GENIUS goods had occurred in New Zealand during the relevant period.
Genius attempted to argue that use by a licensee’s distributor does not amount to use by the owner, however, the Assistant Commissioner, referring to section 7(2) of the Act, noted that use of a trade mark will be considered use when that use is authorised by and subject to the control of the owner. Accordingly, Scholz was allowed to retain its registration for the goods on which it was able to demonstrate use.
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.