2.1 Person who has an interest

A person who has an interest may make an application for rectification. ¹ The owner of a registered trade mark is clearly a person who has an interest. Additionally, a person, other than the owner of a registered trade mark concerned may apply for rectification.

The extent of the “interest” required for a person to have standing to make such an application pursuant to section 76(1) of the Act has not yet been considered either by the Commissioner or the Courts in New Zealand. The standing of an applicant will be determined by the Commissioner on a case by case basis. IPONZ considers that the term “interest” is likely to be interpreted broadly.

Regulation 87(h) of the Regulations requires an application for rectification by a person other than the owner to be accompanied by a statement of the basis on which the applicant claims to be a person who has an interest, thereby enabling the Commissioner to determine if the applicant has standing.

The 1953 Act required an applicant for rectification to satisfy the Commissioner that they were a “person aggrieved”, as did the predecessor section of the UK rectification provision. A “person aggrieved” is a higher standard than that of a person having an ‘interest”. New Zealand decisions of the IPONZ Hearings Office interpreted the wording “person aggrieved” liberally.

Brown and Grant, The Law of Intellectual Property in New Zealand at 92 states that:

Similarly, the wording “person aggrieved” was interpreted in the United Kingdom broadly, namely that “the effect of the requirement was therefore to exclude only busybodies or persons with only a fanciful interest”.²

Section 64 of the UK Act states that an applicant for rectification must have a “sufficient interest”. This is arguably narrower than the “interest” that is required in New Zealand, rendering the relevant test in New Zealand at a lower threshold.

The UK Trade Marks Office consider that the “sufficient interest” may have to be established where the applicant has no obvious interest, beneficial, registered or otherwise. What constitutes a “sufficient interest” has been considered in the context of section 64 of the UK Act. The standing of the following applicants has not been questioned:

• The owner of the registered trade mark;
• The owner of similar trade marks on the register where there was doubt as to whether the registered mark was the correct mark;³
• An applicant claiming to be the correct and true owner of the registered trade mark;⁴ or
• A previous owner of the registered trade mark concerned, that believed they should still be the owner of the registered trade mark.⁵

Other examples of persons that IPONZ considers to have an “interest” include:

• A licensee of the registration;⁶
• Any party that has given consent to the registration;
• A party named in a memorandum; or
• Anyone alleged to infringe a mark would be a person with an interest in its registration.⁷

Footnotes

¹ Section 76(1) of the Trade Marks Act 2002.

² Kerly’s Law of Trade Marks and Trade Names, 13th edition, Sweet & Maxwell, London, p. 51.

³ Red & cream coloured block device, BL (SRIS) O-246-02, 18 June 2002.

⁴ Bendy Toy’s Lt’s Application, BL O-336-01, 3 August 2001 (UK).

⁵ WALKERLAND, BL O-283-02, 19 July 2002 (UK).

⁶ Kerly’s Law of Trade Marks and Trade Names, 13th edition, Sweet & Maxwell, London, p. 51 states that a “registrable transaction” has a sufficient interest.

⁷ Kerly’s Law of Trade Marks and Trade Names, 13th edition, Sweet & Maxwell, London, p. 51.