GLOBERIDE, INC. AND LEANNE MORRIS - [2024] NZHC 2931

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2024-404-203 [2024] NZHC 2931

UNDER the Trade Marks Act 2002

IN THE MATTER

of an appeal from a decision of the Assistant Commissioner of Trade Marks

BETWEEN

GLOBERIDE, INC.

Appellant

AND

LEANNE MORRIS

Respondent

Hearing: On the papers

Counsel:

T Mahood and J Glover for the Appellant D Marriott for the Respondent

Judgment:

9 October 2024

JUDGMENT OF GORDON J

[As to costs]

This judgment was delivered by me
on 9 October 2024 at 3.30 pm, pursuant to r 11.5 of the High Court Rules

Registrar/Deputy Registrar Date:

Solicitors:
HGM Legal, Auckland
J Glover, Barrister, Auckland D Marriott, Barrister, Auckland

GLOBERIDE, INC. v MORRIS [2024] NZHC 2931 [9 October 2024]

[1]This is a decision on costs.

[2] The appellant, Globeride, Inc. (Globeride), applied to the New Zealand Intellectual Property Office (IPONZ) to revoke New Zealand trade mark no. 986073 (FEEL ALIVE trade mark). The FEEL ALIVE trade mark was owned by the respondent, Ms Morris. Ms Morris filed a counterstatement and evidence in the IPONZ proceeding in support of the registration.

[3] On 5 December 2023, the Assistant Commissioner of Trade Marks (Assistant Commissioner) directed that the FEEL ALIVE trade mark remain on the register of trade marks in relation to a narrowed range of goods.1 Globeride appealed this decision to the High Court, seeking complete revocation of the FEELALIVE trade mark. Ms Morris was content to abide the decision of the Court and accordingly took no part in the appeal.

[4] On 9 August 2024, I allowed the appeal (the judgment).2 In an earlier minute, the proceeding had been set as category 2 and leave had been granted for Ms Morris to be heard on costs. Accordingly, I reserved costs.

[5] Globeride seeks costs and disbursements in the sum of $19,883.50. This sum is comprised of $17,033.50 in relation to the judgment on a 2B basis, and $2,850 in relation to the IPONZ proceedings.

[6] Ms Morris opposes the award of any costs. Mr Marriott on her behalf submits that Ms Morris bore no responsibility for any costs incurred by Globeride, either in the appeal or the IPONZ proceeding. Further, following delivery of the judgment, Ms Morris made an offer, described as on a without prejudice save as to costs basis, to settle the issue of costs. Globeride did not respond to the offer. In the circumstances, Mr Marriott submits that it is appropriate for the Court to dismiss Globeride’s application for costs.

1 Morris v Globeride, Inc [2023] NZIPOTM 50.
2 Globeride, Inc. v Morris [2024] NZHC 2234.

Should costs be awarded against Ms Morris?

Costs on the IPONZ proceeding

[7] Mr Mahood, counsel for Globeride, submits that it is appropriate for this Court to award $2,850 of reasonable costs and disbursements in relation to the IPONZ proceedings as set out in Schedule 2 to this judgment, which was annexed to Mr Mahood’s submissions.

[8] Mr Mahood submits that…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading GLOBERIDE, INC. AND LEANNE MORRIS

Details

AGLC: GLOBERIDE, INC. AND LEANNE MORRIS [2024] NZHC 2931
Case: [2024] NZHC 2931
Decision Date: 9 October 2024

CaseChat Overview and Summary

In the High Court of New Zealand, Globeride, Inc. appealed against a decision by the Assistant Commissioner of Trade Marks to maintain the registration of the FEEL ALIVE trade mark, owned by Leanne Morris. Globeride sought complete revocation of the trade mark, while Ms Morris did not participate in the appeal. The court was required to determine whether costs incurred by Globeride in both the IPONZ proceedings and the High Court appeal should be awarded against Ms Morris.

The court found that while Globeride had successfully appealed, it was not appropriate to award costs against Ms Morris in the High Court. Ms Morris had not contributed to the error that necessitated the appeal and had taken no part in the appeal, advising the court of this at the earliest opportunity. The court reasoned that the error was attributable to the Assistant Commissioner, not Ms Morris, and that the costs should lie where they fall in the High Court. However, the court did order Ms Morris to pay $2,850 in costs and disbursements incurred in the IPONZ proceeding.

The court ruled that Globeride's application for costs in the IPONZ proceeding was successful and ordered Ms Morris to pay the costs. The court determined that Ms Morris had actively opposed the application for revocation and that it was appropriate for her to bear the costs of the IPONZ proceeding. The court refused Globeride's application for costs in the High Court, ordering that costs were to lie where they fall.

In conclusion, the court ordered Ms Morris to pay $2,850 in costs and disbursements for the IPONZ proceeding but refused Globeride's application for costs in the High Court. The costs for the High Court were to lie where they fall.

Orders