Blink Cameras Limited v Flexirent Capital Pty Limited

[2022] NZHC 1653

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE

CIV-2022-485-133

[2022] NZHC 1653

UNDER

the Trade Marks Act 2002

IN THE MATTER

of an appeal from a decision of the

Intellectual Property Office of New Zealand

BETWEEN

BLINK CAMERAS LIMITED

Appellant

AND

FLEXIRENT CAPITAL PTY LIMITED

Respondent

Hearing:

On the papers

Counsel:

E C Gray for Appellant

No appearance by Respondent

Judgment:

13 July 2022

JUDGMENT OF ELLIS J

[1]    Blink Cameras Limited (Blink) appeals a decision of the Assistant Commissioner of Trade Marks, delivered on 8 February 2022 under ss 65 and 68 of the Trade Marks Act 2002 (the TMA). In that decision, the Assistant Commissioner granted Blink’s application for the revocation of Trade Mark No. 982796 BLINK SWITCH in classes 9, 36 and 38. The BLINK SWITCH trade mark was, up until that decision, held by Flexirent Capital Pty Ltd (Flexirent).1

[2]    Blink’s appeal relates to the date from which the revocation takes effect. The Assistant Commissioner backdated the revocation order to 25 July 2021, the date of

1      Flexirent Capital Pty Ltd v Blink Cameras Ltd [2022] NZIPOTMR 5.

BLINK CAMERAS LTD v FLEXIRENT CAPITAL PTY LTD [2022] NZHC 1653 [13 July 2022]

Blink’s revocation application. For reasons that will later be explained, Blink says it should have been backdated to 19 February 2017.

[3]    Flexirent did not take steps to oppose Blink’s application and so the Assistant Commissioner determined the application on the papers.2 Similarly, Flexirent takes no position on the appeal. It has also been dealt with on the papers.

Relevant law

[4]    Under s 65 of the TMA an “aggrieved person” may apply to the Commissioner of Trade Marks3 or the High Court for revocation of the registration of a trade mark on any of the grounds set out in s 66. Under s 66(1)(a) registration can be revoked on the ground:

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:

[5]    Section 66(1A) provides that for the purposes of subs (1)(a), “continuous period” means a period commencing on a date after the actual date of registration and continuing uninterrupted to the date one month before the application for revocation.

[6]    The Supreme Court has described s 66(1)(a) as a “use it or lose it” provision, and observed that, “All policy considerations support trade mark protection only when a mark is in use.”4

[7]    Under s 67, the trade mark’s owner has the onus to provide proof of use once an application for revocation has been made under s 66(1)(a). And s 68(1) provides that if the Commissioner (or Court) is satisfied grounds for revocation exist, revocation must follow.

[8]    Of some importance in this case is s 68(2), which provides that if a registration is revoked to any extent, the rights of the trade mark owner cease on the date of the

2      In accordance with s 96(2) of the Trade Marks Act 2002.

3      Defined to include an Assistant Commissioner of Trade Marks.

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

application to revoke or, if the Commissioner or Court are satisfied that the grounds for revocation existed at an earlier date, that date.

[9]    A person aggrieved by any decision of the Commissioner under the Act may appeal to the High Court.5 This is a general appeal by way of rehearing.6

The facts and the Assistant Commissioner’s decision

[10]Flexirent registered the BLINK SWITCH trade mark on 18 February 2014.

[11]   On 22 October 2020, Blink filed trade mark application number 1162438 for the mark BLINK with the Intellectual Property Office of New Zealand (IPONZ). IPONZ raised the pre-existing BLINK SWITCH Registered Mark as a barrier to the acceptance of this application, under s 25(1) of the Act. This barrier to registration, and to Blink’s commercial activities, made Blink an “aggrieved person” for the purposes of s 65(1).

[12]   Blink applied for revocation of the BLINK SWITCH trade mark on 26 August 2021. In its application it asked that revocation take effect:

from 19 February 2017, or alternatively, the first in time of the earliest date possible, and 25 July 2021;

[13]   In the absence of evidence of any use from Flexirent, the substantive (revocation) outcome was a foregone conclusion. The Assistant Commissioner simply said:

[I]n the absence of any evidence, I cannot be satisfied that the Owner has discharged its onus of proving that it made genuine use of its mark during the applicable non-use period set out in section 66(1)(a) of the Act.

[14]   The Assistant Commissioner stipulated the revocation date as 25 July 2021, the date of filing.  It  appears  she  did  not  consider  the  earlier,  preferred,  dated  of  19 February 2017.

5      Trade Marks Act 2002, s 170.

6      Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141, at [16].

Discussion

[15]   The point advanced on appeal is that, absent evidence of any use of the trade mark by Flexirent since its registration on 18 February 2014, the date on which the   s 66(1)(a) threshold for revocation was met was 19 February 2017. Importantly, if revocation only takes effect on 25 July 2021, Flexirent’s trade mark would still be registered as at the date of Blink’s own trade mark application, on 22 October 2020, and would continue to be a barrier to it.

[16]   Blink refers to and relies on dicta from the Supreme Court’s recent decision in International Consolidated Business Pty Ltd v S C Johnson & Son Inc.7 There, in the course of discussing the English trade mark decision RIVERIA and the Singaporean decision in Campomar SL v Nike International Ltd, the Court said:8

[55] Section 68(2) allows revocation to occur at a date earlier than the revocation application. This means that the date can be set to match the application date for the new registration application, provided the grounds in s 66 for revocation existed at that time. Backdating a revocation application to align with the date of registration means that there will be no issue with s 25(1) of the Act as there will not be two identical or similar registered trade marks on the register at the same time.

[17]And later:9

… There cannot be an identical or similar trade mark belonging to different parties on the register at the same time. This means that an application for registration of a trade mark must:

(i)not precede the date of application for revocation; or

(ii)if it does, there must be an application to backdate the revocation to the date of application for registration, or there must be a finding of special circumstances under s 26(b) or that one of the other exceptions in s 26 applies.

[18]   The possibility of a finding of “special circumstances” under s 26 was not raised by Blink and I do not address it. Instead, I am satisfied that grounds for revocation existed at a date earlier than the date of Blink’s revocation application, and before the date of Blink’s application for registration of the BLINK trade mark on

7      International Consolidated Business Pty Ltd v S C Johnson & Son Inc [2020] NZSC 110.

8      At [55]; Re RIVERIA Trade Mark [2003] RPC 50 (Trade Marks Registry); Campomar SL v Nike International Ltd [2011] SGCA 6, [2011] 2 SLR 846.

9      International Consolidated Business Pty Ltd v S C Johnson & Son Inc, above n 7, at [83].

22 October 2020. There is no evidence of any use by Flexirent of the BLINK SWITCH trade mark at any time since registration of that trademark on 18 February 2014, the onus being on Flexirent to provide such evidence. Blink’s application for revocation made it clear that it sought revocation to be backdated to that earlier date, if possible.

[19]   The appeal is allowed. The revocation date of 25 July 2021 ordered by the Assistant Commissioner is quashed. The revocation of trade mark registration number 982796 for the mark BLINK SWITCH is, instead, backdated to 19 February 2017.

[20]   It has been agreed between Blink and Flexirent that the costs of this appeal should lie where they fall and I so order.

Rebecca Ellis J

Solicitors:

Hayman Lawyers, Wellington for Appellant