Globeride, Inc v Morris - [2024] NZHC 2234

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2024-404-203

[2024] NZHC 2234

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: 25 July 2024

Appearances:

J Glover and E Ryan for the Appellant No appearance for the Respondent

Judgment:

9 August 2024

JUDGMENT OF GORDON J

This judgment was delivered by me on 9 August 2024 at 3 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 2234 [9 August 2024]

[1] This is an appeal by the appellant, Globeride, Inc. (Globeride), from a decision of the Assistant Commissioner of Trade Marks (Assistant Commissioner) dated 5 December 2023 in relation to an application by Globeride to revoke the FEEL ALIVE trade mark (the decision).1

[2] The respondent, Leanne Morris, is the registered owner of the FEEL ALIVE trade mark. Ms Morris did not participate in the hearing in this Court, nor did she file any documents in the proceeding. In an email to the case officer sent on her behalf, the Court was advised that Ms Morris was content to abide the decision of the Court. Accordingly, the hearing proceeded as a formal proof.2

Background

[3] On 11 October 2013 Ms Morris filed an application for the trade mark FEEL ALIVE in class 25 for, among other things, articles of clothing. The trade mark was registered as New Zealand trade mark no. 986073, on 15 April 2014 (FEEL ALIVE trade mark).

[4] On 26 April 2022 Globeride filed an application under s 65 of the Trade Marks Act 2002 (Act) to revoke the FEEL ALIVE trade mark pursuant to s 66(1)(a) of the Act.

[5] The application for revocation was made on the basis that Ms Morris had not used the FEEL ALIVE trade mark in relation to the goods for which it was registered for a continuous period of three years. The three-year period of alleged non-use was 25 March 2019 to 26 March 2022 (non-use period).

[6] In the decision, the Assistant Commissioner directed that the FEEL ALIVE trade mark remain on the register of trade marks, but only for a narrowed range of goods.

1 Morris v Globeride, Inc. [2023] NZIPOTM 50 [decision].
2 Trade Marks Act 2002, s 172(1) provides that on an appeal, the Court must hear the parties and the Commissioner. Counsel for Globeride confirmed that the Commissioner had been served with the Notice of Appeal and had acknowledged service. The Commissioner did not seek to be heard.

[7] Globeride appeals from the decision to allow the FEEL ALIVE trade mark to remain on the register of trade marks in relation to any of the specified goods.

The decision

[8] The decision was made on the papers. Ms Morris filed…

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 v Morris

Details

AGLC: Globeride, Inc v Morris [2024] NZHC 2234
Case: [2024] NZHC 2234
Decision Date: 9 August 2024

CaseChat Overview and Summary

The High Court of New Zealand considered an appeal by Globeride, Inc. against a decision by the Assistant Commissioner of Trade Marks, which allowed the FEEL ALIVE trade mark to remain on the register of trade marks. The trade mark, owned by Leanne Morris, was registered for articles of clothing. Globeride's application to revoke the trade mark was based on the assertion that Morris had not used the trade mark for a continuous period of three years, which is a requirement under the Trade Marks Act 2002. The Assistant Commissioner had partially revoked the registration, narrowing the scope of goods for which the trade mark was valid to women’s exercise clothing only. Globeride appealed this decision on several grounds, including the Assistant Commissioner's alleged failure to give sufficient weight to the onus of proof on Morris to demonstrate use of the trade mark during the non-use period.

The Court found that Morris's evidence did not sufficiently demonstrate genuine use of the FEEL ALIVE trade mark in relation to the specified goods during the non-use period. The Court noted that Morris's evidence was largely speculative and lacked concrete details. The Court highlighted that Morris did not provide any invoices, payment confirmations, or detailed records of sales that could substantiate the claim of use. Additionally, Morris's evidence regarding the control over Feel Alive Ltd, which she claimed was using the trade mark, was insufficient to establish that Morris had authorised and controlled the use of the mark. The Court concluded that Morris had not met the legal requirements to prove the use of the trade mark, leading to the decision to revoke the FEEL ALIVE trade mark registration entirely. The Court ordered that the trade mark be removed from the Register of Trade Marks with effect from the date of Globeride's application for revocation.

Orders