New Zealand: Brand Owners Are Reminded To Get It Right The First Time, In New Zealand Revocation Actions

A recent appeal of a non-use revocation action in Aotearoa New Zealand demonstrates how important it is to take appropriate action in the first instance, if a registered New Zealand trade mark faces a non-use revocation action.

In Renault SAS v Always Hire Limited [2023] NZHC 304 (27 February 2023), Renault appealed the Assistant Commissioner of Trade Mark's decision to revoke its registration of MASTER in class 12, following Allways Hire Ltd's revocation application.

As Renault did not lodge a counterstatement and evidence in responses to Allways' revocation action, the Assistant Commissioner took the only course open to him under the New Zealand legislation and revoked the Renault trade mark.

Renault appealed the decision and sought to leave to adduce further evidence to show its use of the MASTER mark. As Van Bohemen J noted, "Renault's case is that, even if the decision was properly made, it is open to the Court to grant leave to Renault to adduce evidence to show that, if that evidence had been available to the Assistant Commissioner, Renault's MASTER mark would not have been revoked".

New Zealand revocation actions are "use it or lose it"

Van Bohemen J noted the Supreme Court's succinct observation in Crocodile International Pte v Lacoste that trade mark revocation actions are "use it or lose it" actions, in New Zealand ¹ .

The Court also recognised the unusual nature of the appeal, as it "cannot be said the Assistant Commissioner's decision was wrong. Section 67 of the Act required Renault to provide proof of use of its MASTER trade mark if it intended to oppose the...revocation application. Because Renault failed to provide any such proof, reg 96 of the Regulations required the Assistant Commissioner to decide the application on the basis of the Allways Hire application. That application asserted there had been no use of the Renault MASTER mark. In these circumstances, the Assistant Commissioner took the only course open to him and revoked the Renault trade mark "

What is more important - natural justice or procedure?

Renault asserted that " in the interests of justice for leave to be granted given the clear and overwhelming evidence of Renault's use of the MASTER mark and that Renault's failure to respond to the Allways Hire application and to file and serve evidence was inadvertent ".

However the Court noted that " The Act prescribes a procedure that must be followed if the owner of a registered trade mark intends to oppose an application for revocation of that mark. Renault failed to follow that procedure. Renault has provided no explanation for that failure...... To allow the holder of a registered trade mark that has failed to comply with these prescriptions to adduce on appeal evidence that it could have adduced earlier would be to put the applicant for revocation and the Commissioner to additional costs and burdens. That would not be consistent with the statutory purpose of simplifying procedures for registering a trade mark in order to reduce costs to applicants and reducing business compliance costs generally. Nor would it be consistent with the "use it or lose it" character of s 66 of the Act which s 67 is clearly intended to reinforce.

Van Bohemen J noted further that "If Renault's application were granted, the Court would have little basis for declining an application to adduce further evidence that was asserted to be cogent and credible, regardless of whether the evidence was fresh and regardless of the reasons that evidence that was not fresh had not been adduced at first instance. That would be contrary to the clear policy of the Act that applications for revocation must be dealt with efficiently and without imposing unnecessary cost ".

Are revocation proceedings the same in Australia?

No. In Australia, an appeal of a non-use revocation action is de novo. Had the same situation arisen in Australia, Renault would have been free to lodge all of the evidence which it tried to lodge in New Zealand, irrespective of what happened in the decision of first instance.

Furthermore in Australia the Registrar of Trade Marks has a discretion in non-use revocation proceedings not to remove a trade mark from the Trade mark Register even if the mark has not been used during the relevant non-use period. There is no such discretion in New Zealand.

Get it right first time, in New Zealand

This case is a reminder that in New Zealand revocation proceedings it is critical to take appropriate steps and lodge relevant evidence in the first instance. Unlike Australia, it is unlikely that any inaction or omissions can be corrected upon appeal.

Or as Billy Joel sang once, "get it right first time".

Footnote

1 Crocodile International Pte v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 at [51]

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