NEW ZEALAND: Court Rejects Inferences to Support Genuine Use of Trademark as Insufficient

New Zealand’s High Court has overturned the Assistant Commissioner’s decision and directed that a trademark registration be revoked in its entirety for non-use. This affirms the strictness of New Zealand’s approach to non-use and the importance of good evidence.

Before the Assistant Commissioner, Globeride, Inc. was successful in partially revoking the trademark FEEL ALIVE. Its appeal to the High Court, in Globeride, Inc. v. Morris, NZHC 2234 (Aug. 9, 2024), focused on the volume, nature, and credibility of the evidence of use the trademark owner filed and the weight the Assistant Commissioner had given this, including its inferential value.

The judge held that the owner’s evidence was insufficiently clear and that the onus was on the trademark owner to show genuine use. While the Assistant Commissioner was sympathetic to the trademark owner and drew inferences based on the evidence filed, this was insufficient to show genuine use in the eyes of the High Court.

The judge held the following:

The Assistant Commissioner erred in drawing the inference that there had been a use of the FEEL ALIVE trademark in the non-use period. I consider the evidence produced by Ms Morris [the trademark owner] falls well short of the requirement to establish compelling and conclusive evidence of use during the non-use period.

Unsupported assertions of use are not adequate. Tangible examples of use from within the relevant period are required, such as advertisements using the trademark or sales of goods bearing the trademark.

The judge cited from the recently published Trade Marks in Practice (Batty, Rob & Glover, Kevin, 5th ed., LexisNexis, Wellington, New Zealand, 2024), stating:

A distinction may be drawn between actual use and evidence of that use. It is the latter that is determinative. Bald assertions in evidence statements on behalf of the owner that a mark has been used are given little weight by the Court or by Assistant Commissioners.

It is also notable that even if the judge had held that there was use in the non-use period sufficient to preserve the registration, this was use by the company Feel Alive Ltd and not the trademark owner Ms. Morris. There was no evidence of the exercise of control by Ms. Morris over alleged user Feel Alive Ltd, so the registration could not have been saved.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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