ABSTRACT
It is a core facet of trade mark law that the property rights created by the registration of a trade are subject to a ‘use it or lose it’ philosophy. An aggrieved person can apply to revoke a trade mark registration that has not been put to genuine use for a continuous period of time (three years in New Zealand). If a revocation application is filed, and genuine use or special circumstances excusing non-use are not established by the registered trade mark owner, the trade registration must be revoked. Section 68(2) of New Zealand’s Trade Marks Act 2002 then states that the rights created by registration cease – either on the date of the application for revocation or at an earlier date ‘if the Commissioner or Court is satisfied that the grounds for revocation of the registration of the trade mark existed at an earlier date’. But what is the position if a third party infringes the unused trade mark registration during the time the rights remained in force? Examining the consequences of the New Zealand Supreme Court’s judgment in International Consolidated Business Proprietary Ltd v SC Johnson & Son Inc, and drawing on United Kingdom jurisprudence and Australian case law and academic commentary, this short article considers the difficult question of whether a defendant can be held liable for trade mark infringement stemming from its actions before the date the registered trade mark was revoked.
Batty, Rob, Infringing a Trade Mark that Has Been Revoked: An ‘Academic’ Question? (March 1, 2023), University of Auckland Faculty of Law Research Paper Series 2023; (2023) 10 New Zealand Intellectual Property Journal 37.
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