LAW

When it comes to pro­tect­ing her­itage trade­marks, it’s a bat­tle be­tween ‘ use it or lose it’ and ‘ resid­ual rep­u­ta­tion’, says John Hack­ett.

New Zealand Marketing - - Contents -

Use her­itage trade­marks or lose them, says John Hack­ett.

AN IN­TER­EST­ING CASE IS quite lit­er­ally “brew­ing” in Aus­tralia at the mo­ment. It re­lates to a num­ber of old beer la­bels (up to 67 in to­tal) that have be­longed to Fos­ter’s Group ( SAB­Miller) un­der their Carl­ton United Brew­eries brand, for, in some cases, 120 years.

The law re­lat­ing to trade­mark reg­is­tra­tions in most ju­ris­dic­tions is that if there has not been any com­mer­cial use of a reg­is­tered trade­mark for a set pe­riod of time (usu­ally the past three years) for the prod­uct or ser­vices for which it is reg­is­tered then it can be re­voked by a third party for non-use.

This is a kind of “use it or lose it” sce­nario, where a third party wish­ing to use a new name will first check the lo­cal in­tel­lec­tual prop­erty of­fice trade­mark records to see if the name is free for them to reg­is­ter.

If the third party finds a reg­is­tered trade­mark that is a com­plete bar to their use and reg­is­tra­tion of their new name, and cov­ers the same ac­tiv­ity they want to use the name on, they have the op­tion of check­ing in the mar­ket­place to see if that name has been used over the past three years. If there hasn’t been any com­mer­cial us­age of the name, then the va­lid­ity of that trade­mark reg­is­tra­tion is open to at­tack by fil­ing a non-use re­vo­ca­tion ac­tion.

THE LAW IS QUITE CLEAR IN NEW ZEALAND: USE IT OR LOSE IT. SO, IF YOU HAVE NOT MADE COM­MER­CIAL USE OF YOUR TRADE­MARK FOR THE GOODS OR SER­VICES FOR WHICH IT IS REG­IS­TERED FOR A CON­TIN­U­OUS THREE

YEAR PE­RIOD, IT CAN BE RE­VOKED FOR NON-USE BY A THIRD PARTY.

In the case of Thun­der Road Brew­ing Com­pany vs. Carl­ton United Brew­eries, the third party (Thun­der Road) is try­ing to show that Fos­ter’s has not made any gen­uine at­tempt to com­mer­cially use its beer brands on beer dur­ing the statu­tory three year pe­riod, and as a re­sult, all of the reg­is­tra­tions vul­ner­a­ble un­der the leg­is­la­tion should be re­voked.

Thun­der Road ar­gues that even if Fos­ter’s can show use of any of the brands on beer in the rel­e­vant three year pe­riod, such use is not bona fide com­mer­cial use.

They aim to prove that any use that may have taken place is sim­ply “to­ken use” aimed at de­fend­ing the trade­mark reg­is­tra­tions from a nonuse re­vo­ca­tion ac­tion.

Fos­ter’s claims the ac­tion taken is equiv­a­lent to some­body com­ing to your house and tak­ing your fam­ily photographs. And this raises an in­ter­est­ing ques­tion re­gard­ing the “resid­ual rep­u­ta­tion” of the brand or brands.

As an ex­am­ple, in New Zealand, Leop­ard beer has for a long time not been seen on the shelves in bot­tle stores. Yet if any­body men­tioned the word “Leop­ard” as a beer la­bel, the ma­jor­ity of New Zealan­ders over 40 or 50 im­me­di­ately as­so­ci­ate the name as a Lion brand of beer. Some would even say that it was brewed in Napier.

So, can a “resid­ual rep­u­ta­tion” cre­ated by his­tor­i­cal use, save a trade­mark that has not oth­er­wise been used, from be­ing re­voked?

In Aus­tralia, it prob­a­bly can be enough to de­fend a trade­mark reg­is­tra­tion from at­tack for non-use. We will soon see when the re­sult comes out con­cern­ing the at­tack on the va­lid­ity of the Fosters trade­mark reg­is­tra­tions.

But what about New Zealand?

The law is quite clear in New Zealand—”use it or lose it”— so, if you have not made com­mer­cial use of your trade­mark for the goods or ser­vices for which it is reg­is­tered for a con­tin­u­ous three year pe­riod, it can be re­voked for non-use by a third party.

So, how does the Leop­ard sce­nario (as men­tioned above) change things, if at all?

There is lit­tle doubt in my mind that Lion could show that a sig­nif­i­cant num­ber of peo­ple as­so­ci­ate the name Leop­ard with the well-known brand of beer mar­keted by Lion in the 1960s and 1970s. While the trade­mark reg­is­tra­tion for Leop­ard could be re­voked for non-use, I be­lieve the resid­ual rep­u­ta­tion in the name would be suf­fi­cient for Lion to bring a suc­cess­ful ac­tion un­der the FTA to show that use by an unau­then­ti­cated third party of Leop­ard on beer, would amount to mis­lead­ing or de­cep­tive con­duct in the course of trade.

So let’s wait and see what de­vel­ops in Aus­tralia with the de­ci­sion of the Aus­tralian trade­mark of­fice due in a few months time. My pick is that the au­thor­i­ties there will side with Fosters and say that the “resid­ual rep­u­ta­tion” is strong enough for the dis­cre­tion to be ex­er­cised in Fos­ter’s favour, and for the use which has taken place, in com­bi­na­tion with the ear­lier rep­u­ta­tion, to save the reg­is­tra­tions from be­ing re­voked. Watch this space.

Writ­ten by JOHN HACK­ETT Hack­ett is a part­ner at AJ Park. john.hack­ett@ aj­park.com

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