On 18 December 2009, the New Zealand High Court and Court of Appeal both issued trade mark decisions, one considering a procedural issue and the other trade mark infringement.
The High Court decision concerned the issue of whether an extension of time could be granted in a revocation for non-use proceeding where the deadline for filing the applicant for revocation's evidence had been inadvertently missed (The Muir Electrical Company Pty Limited v The Good Guys Group Limited CIV-2009-404-4965, High Court Wellington, December 18 2009, Lang J).
The two relevant provisions were regulation 98 and regulation 32. Regulation 98 provides that if an applicant does not file evidence or notify the Commissioner that it does not intend to file evidence, the application for revocation is discontinued. Regulation 32 provides that the Commissioner can extend time under the regulations "except where these regulations stipulate that time must not be extended".
Regulation 98 contains no such prohibition on extending time after a deadline has passed but despite this, the High Court ruled that at the expiry of the extension of time, the application for revocation had been discontinued and it was not possible to turn back the clock and grant a retrospective extension of time.
The decision demonstrates the harsh consequences that can follow if a deadline is inadvertently missed.
The Court of Appeal decision considered whether Johnson & Johnson could continue to use and register its trade mark "K-Y Sensual Silk" in the face of an earlier registration for the same goods for "Sylk" (Geneva Marketing (1998) Limited v Johnson & Johnson & Ors [2009] NZCA 591), the High Court having earlier ruled that there was not even a reasonable possibility of confusion.
The Court of Appeal considered the issues to be more finely balanced than the High Court and found that, although there would be some confusion or deception, Geneva could not reach the necessary threshold of confusion or deception among a significant number of persons.
The differences between the two parties' packaging was held to be more important than the similarities and the discerning nature of the purchasers and the fact Johnson & Johnson's K-Y product was well-known were said to mitigate against a finding of infringement.
Geneva was unable to prevent Johnson & Johnson's use of a phonetically identical and visually very similar trade mark on identical goods. Geneva can seek leave to appeal to the Supreme Court.
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| Kate Duckworth |
Baldwins
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