This post is the first in a two-part series about aspects of trade mark law that are invisible to non-experts. These areas of the law are invisible because they have developed through case law – and sometimes pretty obscure case law – rather than being set out in the legislation.
IN PRAISE OF CODIFICATION
The good thing about statutes is that they are known, they are usually pretty clear, and they are easily available for anyone to find. The law of trade marks impacts many individual New Zealanders and SMEs, so it is important that people can find it. If someone wants more detail about how a particular section of the law is applied in practice, there is a reasonable amount of information on the IPONZ website. If they are really keen, they can look up case law relating to that section. This is all as it should be.
So I think it is really problematic when whole new strains of trade mark law, which don’t have any obvious basis in the legislation, pop up through court decisions. It just doesn’t seem fair that there are entire areas of trade mark law that no-one could possibly know about if they didn’t spend their lives reading trade mark cases. I mean, I spend my own life reading trade mark cases, but I can fully appreciate that some people might have other things to do with their time.
PROPRIETORSHIP: S 32
In order to establish proprietorship – or ownership, as it is often called nowadays – the applicant must establish that it is the first person to use the mark in New Zealand.
The proprietorship, or ownership, ground of opposition clearly exists. It is fairly unpopular in some circles – but that is a separate issue, which I will also look into some time. For present purposes, it is enough to know that proprietorship has been accepted as a valid ground of opposition in many cases, yet it isn’t referred to explicitly in the Trade Marks Act 2002.
The “proprietorship” section of the Act is s 32. But s 32 is in a part of the Act headed up “Applications – General”. The title of s 32 itself is “Application – how made”. On the face of it, it doesn’t sound as though this section is at all relevant to oppositions, and in fact I don’t believe that this is what the drafters intended at all.
Section 32(1) of the Act says that a “person claiming to be the owner of a trade mark” may apply for the registration of a trade mark. Section 5(1) of the Act defines “owner” of an unregistered mark as the person who owns all of the rights in the mark.
An ordinary person reading the Act, without a knowledge of the case law, would have no idea whatsoever that this combination of s 32(1) and s 5(1) gives rise to a ground of opposition which provides that if a person was not the first to use the mark in New Zealand he or she will not be entitled to it.
APPLICATIONS FOR DECLARATIONS OF INVALIDITY
The position is even messier in the context of applications for declarations of invalidity, which arises where a party seeks to challenge a mark that has already been registered.
Section 73(1) of the Act provides that a trade mark may be declared invalid to the extent that it was not registrable under Part 2 of the Act. Section 32 – the proprietorship section – is not in Part 2 of the Act, but Part 3.
There is clear authority, nonetheless, that an application for a declaration of invalidity may be made on the basis that the owner of the mark is not the true proprietor. The trick is to anchor it back to a section in that is in Part 2 of the Act. For example, in Chettleburgh v Seduce Group Australia Pty Ltd [2012] NZHC 2563, it was held that s 32 could be considered in an invalidity context because s13(2)(a), which is in Part 2, states that an application “must be made in accordance with this Act”, and that was enough to trigger s 32.
CONCLUSION
The legal gymnastics to establish a proprietorship ground of opposition or revocation are ugly and opaque. Even though I have worked my way through the process many times now, every single time I have to remind myself precisely how I am supposed to mangle the wording of the legislation in order to get there. It’s a farce, and we are all colluding in it.
This is an access to justice issue. Our laws should be open and available to all citizens to be able to find and apply. Parties shouldn’t need to know that even though the Act appears to list all of the various grounds of opposition and revocation, there is actually another secret one lurking in the case law.
Let’s sort it out.
