Revocation of registration of trade mark

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Intellectual Property Office of New Zealand

Trade Mark Hearings

In this guideline

Revocation of registration of trade mark

Introduction

Any person who can show they are aggrieved by either:

  • a registered national trade mark; or
  • an International Registration protected in New Zealand (hereafter referred to as an IRPNZ). 

can apply to have it revoked on either:

  1. the ground of non-use 1 ; or
  2. grounds other than non-use. 2

If successful, the registered national trade mark or IRPNZ is removed from the register to the extent it is revoked.

For the purpose of this guideline, the term ‘trade mark registration’ is used to refer to either a national trade mark registration or IRPNZ.

Application for revocation process overview

Application on ground of non-use

  • Applicant files an application for revocation.
  • Within 2 months, the owner or licensee of the trade mark registration may oppose the application by filing both:
    (a) a counterstatement; and
    (b) evidence of either:
    (i) use of the trade mark; or
    (ii) evidence of special circumstances explaining the non-use of the trade mark.
    *If the owner or licensee does not file both its counterstatement and evidence by the deadline, the owner or licensee will take no further part in the proceeding and the Commissioner will determine the application on the documents filed by the applicant only.
  • Within 2 months, the applicant must file evidence in support of their position.
  • Within 2 months, the owner may file evidence in support of their position.
  • Within 1 month, the applicant may file evidence strictly in reply to the owner’s evidence.
  • Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard, and confirms the hearing date and venue.
  • Following the hearing, or any other way the parties elected the matter to be decided, the Commissioner issues a formal written decision.
  • The Commissioner’s decision may be appealed to the High Court.

Application on grounds other than non-use

  • Applicant files an application for revocation.
  • Within 2 months, the owner or licensee of the trade mark registration may oppose the application by filing a counterstatement.
    *If the owner or licensee does not file a counterstatement, the owner or licensee will take no further part in the proceeding, and the Commissioner will determine the application on the documents filed by the applicant only.
  • Within 2 months, the applicant must file evidence in support of their position.
  • Within 2 months, the owner may file evidence in support of their position.
  • Within 1 month, the applicant may file evidence strictly in reply to the owner’s evidence.
  • Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard, and confirms the hearing date and venue.
  • Following the hearing, or any other way the parties elected the matter to be decided, the Commissioner issues a formal written decision.
  • The Commissioner’s decision may be appealed to the High Court.

About this information

The following information is intended to guide and inform parties involved in Intellectual Property Office of New Zealand (IPONZ) hearings. It reflects the current accepted practice of IPONZ and is to be read in conjunction with the:

Links to which are provided throughout.

Please note the process for an application for revocation of a (1) national trade mark registration or (2) IRPNZ is largely identical. There are, however, some differences which the parties need to be aware of.

See international trade mark proceedings for more information.

Before filing an application

IPONZ recommends that a party considering filing an application for revocation contacts the trade mark owner directly about their concerns before filing their application to see if the matter can be resolved amicably without the need for formal revocation proceedings. Failure to try and resolve the matter amicably may have a bearing on any subsequent costs that the Commissioner awards to the successful party in the proceedings.

See costs for more information.

Revocation proceedings must be against a registered trade mark

IPONZ will only admit an application for revocation against a trade mark that is in ‘Registered’ or ‘Registered - past expiry date’ status.

Some trade marks may have lapsed into ‘Expired but restorable’ status prior to the commencement of amendments to the Trade Marks Act 2002 on 13 January 2020. IPONZ will not admit an application for revocation against a trade mark that has fallen into the ‘Expired but restorable’ status for non-payment of the renewal fee, notwithstanding that it remains possible to restore the mark under regulation 134 to ‘registered’ status – at which time a third party could apply to revoke it.

1. Application for revocation

Sections 66 and 68, Regulations 94 and 95, International Regulation 21

The purpose of the application for revocation (also referred to as the applicant’s pleadings) is to outline the grounds on which the applicant alleges the trade mark registration should be revoked.

Application for full or partial revocation

An applicant can apply to revoke the whole of the trade mark registration, or just part of the trade mark registration by specifying the relevant classes or goods and/or services that it wishes to have revoked. For example, this may be relevant if there are only some classes or goods or services that the trade mark is not being used for.

The Commissioner when deciding the application for revocation will determine whether the grounds for revocation have been made out in respect of the whole trade mark registration or only part of the trade mark registration.

Requirements for application for revocation

The application for revocation must:

  • be in writing;
  • be accompanied by the prescribed fee; and
  • be signed by the applicant.

The application must also contain the following information specified in regulation 95:

  • the name and address for service of the applicant;
  • if the applicant has an agent, the agent’s name;
  • the number of the trade mark registration to which the application relates;
  • the class/es, or the goods or services, to which the application relates;
  • the grounds for revocation and the provisions of the Act to which those grounds relate [*it is therefore important that the owner cites the relevant sections of the Act to which their grounds relate e.g s 66(1)(a)]; and
  • a statement of the basis on which the applicant claims to be a person aggrieved.

When filing the application through the IPONZ case management facility please take care to ensure the 'Applicant' and 'Owner' fields are correctly entered. The applicant is the party filing the application for revocation. The owner is the party that owns the trade mark registration.

IPONZ will normally process the application for revocation within 15 working days.

Date of revocation

Section 68(2)

In the case of an application for revocation on the ground of non-use, the applicant should specify in their pleadings (i.e. the grounds for the application) the date it wishes to have the trade mark registration revoked from and the alleged period of non-use. If no date is pleaded by the applicant, the date of revocation will usually be taken to be the date of filing the application for revocation.

An earlier date of revocation may be requested by the applicant but will only be granted if the Commissioner or the Court is satisfied that the grounds for revocation existed at that earlier date (s 68(2)(b) of the Trade Marks Act 2002). In these circumstances section 68(2)(b) of the Act should be referenced in their pleadings, and the relief sought, to support this earlier date.

If a party applies to revoke a mark which has been cited against their own pending application, the date of revocation requested should be one day before the application date (or convention priority claim) of that pending application. 3

An earlier revocation date will not be accepted on the grounds of non-use where it falls within three years of the actual registration date of the cited mark (section 66(1)(a) and (1A)).

If necessary where a cited mark is involved, an earlier revocation date can be pleaded as one of two dates for revocation with the alternative date being the date the application for revocation was filed. 4  Other than this situation, alternative dates of revocation should not be necessary.  If the applicant pleads alternative dates of revocation other than in this scenario, the date of revocation will usually be the filing date of the revocation application.

Where can an application for revocation be filed?

Section 65

An aggrieved person can apply to either the Commissioner, via IPONZ, or the High Court for revocation of the trade mark registration. In most cases, applications are filed with IPONZ in the first instance because it is seen as the more accessible forum.

However, where there is already another pending court action against the registered trade mark, the aggrieved person must apply to the Court. For example, if there are infringement proceedings in the High Court, it is common for the other party to file an application for revocation as a defence or counterclaim.

Aggrieved person

An application for a revocation can only be made by an 'aggrieved person'. The onus is on the person applying for the revocation to establish they are aggrieved, as at the date they filed their application. 5

It is now settled law that the term 'aggrieved person' is to be given a liberal or wide interpretation. Such an interpretation is consistent with the public interest in maintaining the integrity of the register and section 5(1) of the Interpretation Act 1999. 6 To be aggrieved, the applicant will need show it is appreciably disadvantaged in a legal or practical sense by the owner’s trade mark remaining on the register. 7

Common scenarios in which applicant’s claim to be a ‘person aggrieved’ include:

  • That the registration of the trade mark is preventing the acceptance of the applicant’s own trade mark application. 8
  • The applicant is in the same trade as the owner of the registered trade mark, and its business is affected by the continued registration of the relevant trade mark.
  • The owner is alleging that the applicant is infringing its trade mark registration.
  • The applicant is a person with a real or substantive interest in the removal of the trade mark registration.
  • The applicant is culturally aggrieved by the registration.

The party who is applying for the revocation must be able to show that at the relevant date they would have been appreciably disadvantaged in a legal or practical sense by the existence of the trade mark registration. 9 The Applicant should include proof of the reasons as to why they are an aggrieved person when filing their evidence during the proceeding.

Grounds for revocation

The application for revocation needs to clearly set out each of the grounds relied upon by the applicant and must also include a clear reference to the section of the Act to which those grounds relate. If the grounds are not pleaded clearly, the application may not be accepted by IPONZ.

The grounds for revocation are:

  1. That at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered. 10 Section 66(1A) of the Act clarifies that the continuous period of 3 years or more must start after the actual date of registration of the trade mark and end at least one month before the date of application for revocation (not including the day the application is made s 35(4) Interpretation Act 1999).
  2. That, in consequence of acts or inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered. 11
  3. That—
    (i) the article or substance was formerly manufactured under a patent or the service was formerly a patented process; and
    (ii) a period of 2 years or more has elapsed since the expiry of the patent; and
    (iii) the word is or the words are the only practicable name or description of the article, substance, or service. 12
  4. That, in consequence of the trade mark's use by the owner or with the owner's consent in relation to the goods or services in respect of which the trade mark is registered, the trade mark is likely to deceive or confuse the public, for instance as to the nature, quality, or geographical origin of those goods or services. 13

Opposition requirements depend on grounds pleaded

The requirements to oppose an application for revocation differ depending on whether the application for revocation is based on the ground of non-use, or grounds other than non-use.

The following guidance is therefore separated into:

  • Requirements for opposition to an application on the ground of non-use; 14 and
  • Requirements for opposition to an application on grounds other than non-use. 15

2. Requirements for opposition to application on ground of non-use

Sections 66(2) and 67, Regulations 96, 97

Once an application for revocation on the ground of non-use has been filed, the Commissioner will notify the trade mark owner and provide them with a copy of the application for revocation. The trade mark owner then has two months to oppose the application if it wishes to defend its trade mark registration.

To oppose an application for revocation on the ground of non-use the owner or its licensee must file both of the following by the deadline set by the Commissioner:

(1) A counterstatement; and

(2) Evidence of–

(i) The use of its trade mark; or
(ii) Special circumstances outside the control of the owner explaining the non-use of its trade mark.

2A.1 Purpose of the counterstatement

The purpose of the counterstatement (also referred to as the owner’s pleadings) is to clarify which assertions in the application for revocation the owner or licensee either accepts or denies. This process is used to determine which matters are actually in contention so that the parties can focus their efforts on these contentious matters when preparing and filing their evidence, as opposed to wasting time and effort filing evidence for matters that are not in dispute.

2A.2 Requirements for counterstatement

The counterstatement must be in writing and contain the following information specified in regulation 97:

  • The name and address for service of the owner or licensee opposing the application.
  • If the owner or licensee has an agent, the agent’s name.
  • A response to the applicant’s grounds for revocation, by admitting, denying, or claiming lack of knowledge of, each assertion made in the application for revocation.
  • A brief statement of the facts on which the owner or licensee relies in support of continued registration.
  • If non-use is due to special circumstances, a statement of those special circumstances.
  • Be signed by the owner or licensee.

IPONZ recommends addressing each assertion made by the applicant by reference to the corresponding paragraph number in the application for revocation. For example, “the owner accepts that the applicant is the owner of trade mark application No. 123456 cited at paragraph 6 of the application”, “the owner denies the allegation by the applicant at paragraph 7 that it has not made genuine use of its trade mark during the non-use period” or “the owner has no knowledge of the information contained in paragraph 8”. This approach will ensure the owner has responded to all assertions in the application.

The brief statement of facts should (briefly) outline the general facts and reasons why the owner’s trade mark should remain on the register.

2A.3 Evidence of use or special circumstances

In addition to filing a counterstatement by the deadline, the owner or its licensee also needs to file evidence of either:

  • use of its trade mark during the relevant non-use period; or
  • evidence of special circumstances outside of its control that prevented it from using its trade mark during this period.

This evidence is required to discharge the onus on the owner to prove use of its trade mark, or special circumstances that prevented use of its trade mark, during the relevant non-use period under section 67. Only once the owner has discharged this onus will the onus shift to the applicant for revocation to prove that the owner either did not make genuine use of its trade mark, or has no valid justification for the non-use of its trade mark due to special circumstances outside its control, such that the Commissioner should revoke the trade mark.

The applicant’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it will not be admitted into the proceeding.

See the evidence guidelines for further information on evidence requirements.

2A.4 Onus on owner to prove ‘genuine use’ or ‘special circumstances’

For the owner to discharge its evidential onus under section 67 the owner’s evidence must overcome a number of evidential hurdles.

Firstly, if the owner’s position is that it has used its trade mark during the relevant non-use period, its evidence must prove use of the trade mark ‘as registered’, as defined by section 7. 16 Next, the evidence must show ‘genuine use in the course of trade in New Zealand for the goods and/or services specified in the registration’, not just token use of the trade mark, use on different goods and/or services, or use in another jurisdiction. 17

If the owner is pleading special circumstances to oppose the application for revocation, its evidence must also prove both:

  • special circumstances; and
  • that those special circumstances prevented use of the trade mark (during the relevant non-use period). 18

2A.5 Consequences of not filing both a counterstatement and evidence

If the owner does not file both a counterstatement and evidence of use and/or special circumstances on or before the deadline as notified by IPONZ, the application for revocation will be determined on the documents filed by the applicant only. 19 The owner will play no further part in the proceedings.

In this situation, standard IPONZ practice is that neither party will be invited to attend a hearing. Instead the case will be passed over to an Assistant Commissioner for a decision on the papers filed by the applicant only. Assuming the Assistant Commissioner is satisfied that the applicant is a person aggrieved for the purposes of s 65(1), in most cases the applicant will be successful on the basis that the owner has not discharged its evidential onus under s 67 to prove use of its trade mark, or other special circumstances that prevented use, to justify the continued registration of its trade mark. On this basis, the Assistant Commissioner will order that the trade mark be revoked subject to any possible appeal of the decision.

It is therefore important that applicants in their application for revocation on the ground of non-use clearly specify the basis on which they claim to be an aggrieved person. For example, if the applicant claims to be an aggrieved person on the basis that the IPONZ examination section has cited the subject trade mark in a compliance report against their application to register a confusingly similar trade mark, then details of their trade mark application must, at a minimum, be provided in the application for revocation. Better still a copy of the compliance report should be annexed to the application for revocation. Alternatively, the applicant should include a statement setting out the reasons why they claim to be ‘appreciably disadvantaged in a legal or practical sense’ by the existence of the subject trade mark registration.

Failure to provide this information is likely to result in the Assistant Commissioner finding the applicant has not established its aggrieved person status, and on this basis the application for revocation must fail.

2B. Requirements for opposition to application on grounds other than non-use

Sections 66(2), Regulations 101 and 102

Once an application for revocation on grounds other than non-use has been filed, the Commissioner will notify the trade mark owner and provide them with a copy of the application for revocation. The trade mark owner then has two months to oppose the application if it wishes to defend its trade mark registration.

To oppose an application for revocation on grounds other than non-use the owner or its licensee must file a counterstatement on or before the deadline set by the Commissioner.

2B.1 Purpose of the counterstatement

The purpose of the counterstatement (also referred to as the owner’s pleadings) is to clarify which assertions in the application for revocation the owner or licensee either accepts or denies. This process is used to determine which matters are actually in contention so that the parties can focus their efforts on these contentious matters when preparing and filing their evidence, as opposed to wasting time and effort filing evidence for matters that are not in dispute.

2B.2 Requirements for counterstatement

The counterstatement must be in writing and contain the following information specified in regulation 102:

  • The name and address for service of the owner or licensee opposing the application.
  • If the owner or licensee has an agent, the agent’s name.
  • A response to the applicant’s grounds for revocation, by admitting, denying, or claiming lack of knowledge of, each assertion made in the application for revocation.
  • A brief statement of the facts on which the owner or licensee relies in support of continued registration.
  • Be signed by the owner or licensee.

IPONZ recommends addressing each assertion made by the applicant by reference to the corresponding paragraph number in the application for revocation. For example, “the owner accepts that the applicant is the owner of trade mark application No. 123456 cited at paragraph 6 of the application”, “the owner denies that use of the mark is likely to deceive or confuse the public” or “the owner has no knowledge of the information contained in paragraph 8”. This approach will ensure the owner has responded to all assertions in the application.

The brief statement of facts should outline the general facts and reasons why the owner’s trade mark should remain on the register.

2B.3 Consequences of not filing a counterstatement

If the owner does not file a counterstatement on or before the deadline as notified by IPONZ, the application for revocation will be determined on the documents filed by the applicant only. 20 The owner will play no further part in the proceedings.

In this situation, IPONZ will invite the applicant to file evidence in support of its application for revocation, and to be heard before the Assistant Commissioner, so it has an opportunity to make out a prima facie case that the trade mark should be revoked. This is necessary to overcome the statutory presumption of validity of the trade mark registration under s 162 of the Act. 21

3. Applicant’s evidence

Revocation for non-use: Regulation 98

Revocation for grounds other than non-use: Regulation 103

*This step applies to both applications for revocation on the ground of non-use, and grounds other than non-use.

From the date the Commissioner sends the applicant the owner’s counterstatement and (in the case of revocation on the ground of non-use) evidence of use of the owner’s trade mark or special circumstances justifying the non-use of the trade mark, the applicant has two months to either:

(a) file evidence in support of the application or
(b) notify the Commissioner they do not intend to file evidence or
(c) notify the Commissioner they wish to withdraw their application.

The applicant’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it will not be admitted into the proceeding.

See the evidence guidelines for further information on evidence requirements.

The applicant must, in addition to filing its evidence with IPONZ by the applicable deadline, serve a copy on the owner as soon as practicable pursuant to regulation 33. Please note that filing evidence with IPONZ through its case management facility doesn't constitute service on the other side.

The application for revocation proceeding on grounds of non-use and/or grounds other than non-use will be discontinued if the applicant fails to do (a), (b) or (c) above by the applicable deadline.

This will result in the trade mark registration remaining on the register.

4. Owner’s evidence

Revocation for non-use: Regulation 99

Revocation for grounds other than non-use: Regulation 104

*This step applies to both applications for revocation on the ground of non-use, and grounds other than non-use.

The owner or its licensee may file evidence in support of its trade mark registration within two months of either:

(a) being served a copy of the applicant’s evidence; or
(b) being notified of the applicant’s intention not to file evidence.

The owner or its licensee’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it won’t be admitted into the proceeding. 

See the evidence guidelines for further information on evidence requirements.

The owner or licensee must, in addition to filing its evidence with IPONZ by the applicable deadline, serve a copy on the applicant as soon as practicable pursuant to regulation 33. Please note that filing evidence with IPONZ through its case management facility doesn't constitute service on the other side.

If the owner and/or licensee decides not to file evidence, this will conclude the evidential stages of the proceeding. The case will then be ready for a hearing.

5. Applicant’s evidence strictly in reply

Revocation for non-use: Regulation 100

Revocation for grounds other than non-use: Regulation 105

*This step applies to both applications for revocation on the ground of non-use, and grounds other than non-use.

If the owner or its licensee’s files evidence, the applicant may file evidence strictly in reply within one month of being served with a copy. It follows that the applicant cannot file evidence strictly in reply where the owner and/or its licensee have chosen not to file any evidence – there being nothing to reply to.

Again, the evidence must be in the form of a statutory declaration or affidavit. In addition to filing it through the IPONZ case management facility, the applicant must also serve a copy on the owner or its licensee.

Once the applicant has filed its evidence in reply, or the deadline for this has passed, the case will be ready for a hearing.

6. Extensions of time and halts

Regulations 28 and 32

At any stage in a revocation proceeding after the application for revocation has been filed, a party may request an extension of time to complete their task or request that the proceeding be halted while another matter is resolved or concluded, for example where the parties have entered into settlement negotiations or where there is another co-pending proceeding between the parties that needs to be determined first.

See extensions and halts guidelines for more information.

7. Withdrawal

Parties may withdraw from a revocation proceeding at any time. However, they should consider reaching an agreement with the other side as to costs before withdrawing from the proceeding (or withdrawing the trade mark registration) otherwise costs may be still be awarded against them.

See costs guidelines for more information.

8. Hearing

Regulations 122, 125, 126 and 127

Once the evidential stages of the revocation proceeding are complete, we will ask the parties how they wish to be heard. The parties may elect one of the following options:

(a) On the papers already filed (no hearing fee)

    • Parties choosing this option are not required to do anything further and will be notified through the case management system when the Assistant Commissioner has decided the case.

(b) By filing written submissions to be considered by the Assistant Commissioner hearing the case (hearing fee required).

    • Parties choosing this option will be set a task through the case management system to file their written submissions.
    • Payment of the hearing fee is due at the time of filing the written submissions.

(c) By attendance at a hearing in person before the Assistant Commissioner (hearing fee required).

    • Parties choosing this option will be notified of a hearing date no less than one month in advance.
    • A task will be set to file hearing submissions by three working days prior to the hearing date.
    • Payment of the hearing fee is due 10 working days before the hearing date.

See fees guidelines for more information.

Wellington is the primary venue for hearings by appearance. However, the IPONZ Hearings Office will consider requests to hold hearings in either Christchurch or Auckland if this better suits the parties. The IPONZ Hearings Office will also consider requests for a party to appear at the hearing via a video link from another MBIE site. While the Hearings Office will attempt to accommodate such requests, it is entirely at the discretion of the IPONZ Hearings Office.

Once the parties have advised how they wish to be heard, a hearing date and venue will be set and the case file including both parties pleadings, evidence, and hearing submissions (if any) will be passed over to the Assistant Commissioner hearing the case.

9. Assistant Commissioner’s written decision

Regulation 162

Following the hearing (either by appearance, written submissions, or on the papers filed) the Assistant Commissioner will issue a written decision, including any award of costs. The decision will normally be issued within 30 working days from the hearing.

The decision of the Assistant Commissioner will be sent to both parties via the IPONZ case management facility.

See costs guidelines for more information.

All IPONZ hearing decisions are published on the New Zealand Legal Information Institute website.

10. Appeal

Sections 170, 171 and 174  — New Zealand Legislation

Parties may appeal the Assistant Commissioner’s decision within 20 working days by:

(a) filing a notice of appeal and application for stay of proceedings in the High Court; and
(b) notifying the Commissioner.

If no appeal is filed, the decision of the Commissioner is final, and the Commissioner will alter any entry on the register accordingly to give effect to the decision.

Please see our guidelines on appeals and stays of proceeding for more information.

Trade Mark hearing decisions: Appeals and Stay of Proceedings

11. Revocation of international registrations protecting New Zealand

Regulation 22(1) of the Trade Marks (International Registration) Regulations 2012)  — New Zealand Legislation

With regard to an international registration protecting New Zealand, if the registration is fully or partially revoked, IPONZ will notify the International Bureau of the extent that the registration has been revoked, as required by legislation.

Footnotes

  • 1 Section 66(1)(a)
  • 2 Section 66(1)(c)-(d)
  • 3 International Consolidated Business Proprietary Ltd v SC Johnson & Son Incorporated [2020] NZSC 110 at [83]. If the revocation date for a cited mark is after the date of the application to register the conflicting mark, the applicant for registration (in opposition proceedings) will need to establish special circumstances under s 26(b) of the Act or that one of the other exceptions in s 26 applies: International Consolidated Business Proprietary Ltd v SC Johnson & Son Incorporated (SC) at [83](b)(ii).  Special circumstances are discussed in N V Sumatra Tobacco Trading Co v New Zealand Milk Brands [2011] 3 NZLR 206 (CA) at [71] and The Eden Park Trust v Cinq-Huitiemes SA [2011] NZIPOTM 33 at [33], and were also found to exist in the International Consolidated Business case.
  • 4 See Nitro AG v Nitro Circus IP Holdings LP [2020] NZIPOTM 23 at [44]-[46].
  • 5 Manhaas Industries (2000) Limited v Fresha International (Import/Export) Co Limited [2012] NZHC 1815 at [21] and Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 (NSWSC) at 455.
  • 6 Metalman New Zealand Limited v Scrapman BOP Limited [2014] NZIPOTM 17 (3 April 2014) at para 51; Fareed Khalaf Sons Company trading as Khalaf Stores v Phoenix Dairy Caribe NV HC Wellington CIV 2002-485-000207, 3 September 2003 at [23].
  • 7 Ritz Hotel v Charles of the Ritz 12 IPR 417 at 455
  • 8 See for example, Miller Chemical & Fertilizer LLC v Ravensdown Limited [2015] NZIPOTM 25 (24 December 2015), at para 27; The Ritz Hotel Ltd v Charles of the Ritz & Anor [1989] 12 RPC 333, cited with approval in Chettleburgh v Seduce Group Austrlia Pty Ltd [2012] NZHC 2563 and Crocodile International Pte Ltd v Lacoste [2013] NZHC 2265. 269 at 273, as followed in Tui AG v DB Breweries Limited [2010] NZIPOTM 31 at [27]
  • 9 Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 454-455
  • 10 Section 66(1)(a)
  • 11 Section 66(1)(c)
  • 12 Section 66(1)(d)
  • 13 Section 66(1)(e)
  • 14 Section 66(1)(a)
  • 15 Sections 66(1)(c)-(e)
  • 16 Cure Kids v National SIDS Council of Australia Ltd CIV-2014-404-001408 [2014] NZHC 3366 at [48] – [83].
  • 17 Ibid at [84 -130] for a discussion of what constitutes ‘genuine use’.
  • 18 Ibid at [131 – 158] for a discussion of what constitutes ‘special circumstances’.
  • 19 Regulation 96(2)
  • 20 Regulation 101(3)
  • 21 Sportsgear New Zealand Limited and White Holdings Limited v Rocawear Licensing, LLC and Mitchell & Ness Nostalgia Company [2005] NZIPOTM 13 (May 2005). Also see O.T.S. S.p.A. v Guardant, Inc [2009] NZIPOTM 5 (9 February 2009), at para 87 – in order to succeed in undefended proceedings, the applicant must establish that it is an aggrieved person under section 73(1) of the Act, and must make out a prima facie case of invalidity in order to satisfy the evidential burden in section 162 of the Act.

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