This matter concerned an application for declaration of invalidity filed by Gourmet Beverages Pty Ltd in respect of Chris Sanson’s registered trade mark No. 1000462 HANK’S in class 32 (non-alcoholic beverages).

The essence of Gourmet Beverages’s claim was that it was the sole licensed distributor of Hank’s Beverages in Australia and New Zealand, and had been dealing with Mr Sanson as a New Zealand sub-distributor at the time he applied for registration of the mark. Gourmet Beverages also claimed that Mr Sanson was not the true owner of the mark, which it claimed belonged to its US supplier, Hanks’ Beverages Company Corporation.

In its application for a declaration of invalidity of Mr Sanson’s registration, it was noted that the application relied on section 17(1)(a) (use would be likely to deceive or cause confusion) and section 17(2)(application is made in bad faith). No reference was made to section 32 (applicant not the owner of the mark).

Of particular relevance, the Assistant Commissioner pointed out to Regulation 107(f) which requires that an application for a declaration of invalidity state both the grounds for the declaration, and the provisions of the Act to which those grounds relate. While there are paths to remedy a failure to comply with this mandatory requirement, these were not applicable in the circumstances. Accordingly, the Assistant Commissioner considered that it was not appropriate to allow Gourmet Beverages to rely in this proceeding on a ground of invalidity that was not properly pleaded.

Turning to the other grounds of invalidity, the Assistant Commissioner found that Mr Sanson’s conduct in registering the HANK’S trade mark in the circumstances fell short of reasonable standards of commercial behaviour. Therefore, Gourmet Beverages succeeded on the section 17(2) ground of opposition. With regard to section 17(1)(a), the Assistant Commissioner noted that Gourmet Beverages did not meet the threshold for establishing reputation of the mark HANK’S in New Zealand at the time of Mr Sanson’s application. Therefore, Gourmet Beverages failed on this ground.

Registration No. 1000462 was declared invalid.

To view the Office decision, click here.