Globeride, Inc v Morris
[2024] NZHC 2234
•9 August 2024
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 an affidavit in support of the registration but did not file any submissions. Globeride filed legal submissions.
[9] The Assistant Commissioner noted that Globeride’s position was that Ms Morris’ evidence did not provide proof of use of the FEEL ALIVE trade mark and that there were two main submissions: the evidence did not show the use of the FEEL ALIVE trade mark in the non-use period; and second, that the use of the mark had been by Feel Alive Ltd which was not the owner of the trade mark. In the alternative it was argued that if there had been use it had not been on all of the specified goods of the registration.
[10] Key paragraphs of the decision in relation to use of the trade mark are as follows:
31.There is much of Ms Morris’ evidence that I am satisfied fails to show use of the FEEL ALIVE mark for clothing during the non-use period. Based on the evidence for Ms Morris to say, on 29 June 2022, “in the last 3 years the level of active promotion … has declined” seems an understatement. However, there is some support for use having been made of the mark. The exhibits to Ms Morris’ affidavit need be considered in conjunction with what is said about them. Ms Morris refers to use of the trade mark on clothing in 2020 and there is some corroboration for this.
…
34.I agree with Globeride that the evidence is scant and much of it cannot be placed in the non-use period. However, while a close call, I consider it a reasonable inference to draw, based on what Ms Morris has said and the exhibited evidence, that there has been use of the FEEL ALIVE trade mark in the non-use period.
35.In considering the use of FEEL ALIVE I have in mind that it is not necessary that that there has been significant use of the trade mark, it is not a quantitative test. One instance of use may be sufficient, provided it is genuine use and proved. Further, use of the trade mark does not necessarily mean the goods have to be sold. Preparations for use such as advertising with the intention to supply the goods may constitute use of the trade mark but preliminary negotiations without an objective commitment to use the mark is not enough.
(footnotes omitted)
[11] In relation to Globeride’s submission regarding the use of the mark by Feel Alive Ltd the Assistant Commissioner said:
39. I agree the lack of a written agreement and the lack of detail about the control exercised by Ms Morris over Feel Alive Ltd is not helpful. I am sceptical about whether there was a “licence”, written or otherwise, when the application was filed. However, I consider Ms Morris has approved and controlled the use of FEEL ALIVE by Feel Alive Ltd. As a practical matter Ms Morris and Feel Alive Ltd are one and the same. They have a unity of purpose and it is commercially unrealistic not to infer Ms Morris controlled the use of the mark by Feel Alive Ltd.
(footnotes omitted)
[12] The Assistant Commissioner concluded that Ms Morris had not used the FEEL ALIVE trade mark on a wide range of clothing and that retaining a specification for “clothing” was not justified. The Assistant Commissioner then reached the conclusion that a fair description of the use was:
Women’s exercise clothing namely T-shirts, singlets, shorts and tights.
[13] The Assistant Commissioner accordingly directed that the trade mark registration was partially revoked in accordance with s 68(1)(b) and that the specification of the goods remaining in the registration was to be: Women’s exercise clothing, namely T-shirts, singlets, shorts and tights.
Grounds of appeal
[14]Globeride appeals the decision on the following grounds:
(a)The Assistant Commissioner erred in law by giving insufficient weight to s 67(a) of the Act, which provides that the onus is on the trade mark owner to prove use of the trade mark during the non-use period.
(b)The Assistant Commissioner erred in fact and law by drawing an inference that there was use of the FEEL ALIVE trade mark in the non-use period, at paragraph 34 of the Decision.
(c)The Assistant Commissioner erred in fact and law in concluding that there was use of the FEEL ALIVE trade mark in connection with clothing during the non-use period, at paragraph 31.
(d)The Assistant Commissioner erred in law by giving insufficient weight to the principle that where there is limited use of a trade mark, compelling and conclusive evidence of that use is required, at paragraph 35.
(e)The Assistant Commissioner erred in law by failing to give sufficient weight to authorities establishing that there is an obvious and strong public interest in unused trade marks being removed from the Register of Trade Marks.
(f)The Assistant Commissioner erred in fact and law by inferring that Ms Morris controlled the use of the FEEL ALIVE mark by Feel Alive Ltd, at paragraph 39.
[15] In terms of relief, Globeride seeks orders that the decision to allow the FEEL ALIVE trade mark to remain on the Register of Trade Marks is to be set aside; that the trade mark registration be revoked and be removed from the Register with effect from 26 April 2022, being the date Globeride filed its application for revocation; and costs, including costs relating to the decision.
Approach on appeal
[16] The appeal proceeds by way of re-hearing on the basis of the record before the Assistant Commissioner,3 and the Court has all the powers of the Commissioner.4 The Court is required to come to its own view on the merits, giving such weight as it thinks fit, to the Assistant Commissioner’s decision. If the Court comes to a different view and is of the opinion that the Assistant Commissioner’s decision is wrong, then the Court must substitute its own view.5
3 Trade Marks Act, s 172(2).
4 Trade Marks Act, s 173(b).
5 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [16].
Statutory framework and legal principles
[17] Section 66(1)(a) of the Act sets out the grounds for revoking the registration of a trade mark. It provides, relevantly, as follows:
66 Grounds for revoking registration of trade mark
(1)The grounds for revoking the registration of a trade mark are as follows:
(a)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:
…
(1A) For the purposes of subsection (1)(a), continuous period means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation.
[18] Ms Glover, counsel for Globeride, assisted the Court with cases that discuss the application of s 66(1)(a). In Metalman New Zealand Ltd v Scrapman BOP Ltd there is a helpful discussion of the term “genuine use” by Lang J.6 The Judge referred to the ruling of the European Court of Justice in Ansul BV v Ajax Brandbeveiliging BV and stated that the following principles can be distilled from that case:7
(a)“Genuine use” should be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. Such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him [or her], without any possibility of confusion, to distinguish the product or service from others which have another origin.
(b)“Genuine use” of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. The protection the mark confers and the consequences of registering it in terms of enforceability vis-à-vis third parties cannot continue to operate if the mark loses its commercial raison d’etre, which is to create or preserve an outlet for the goods or services that bears the sign of which it is composed, as distinct from the goods or services of other undertakings. Use of the mark therefore has to relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking
6 Metalman New Zealand Ltd v Scrapman BOP Ltd, [2014] NZHC 2028, [2014] NZAR 1393.
7 At [14], citing Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-2439 at [36]–
[37] (footnotes omitted).
to secure customers were under way, particularly in the form of advertising campaigns. Such use can be either by the trade mark proprietor or by a third party with authority to use the mark.
[19]Later in the judgment Lang J said:8
It is clear, however, that the issue of genuine use cannot be determined on a quantitative basis alone. Counsel for Scrapman sought to derive assistance on this point, as did the Assistant Commissioner, from the following passage of the judgment of Wilberforce J (as he then was) in NODOZ Trade Mark:
I am faced, therefore, with this question: on those documents, on that evidence, ought I to be satisfied that the respondents have discharged the onus of proof which I hold has shifted to them to establish actual user in this country? It seems to me that the position stands in this way. The respondents are relying upon one exclusive act of user, an isolated act, and there is nothing else which is alleged or set up for the whole of the 5 year period. It may well be, of course, that in a suitable case one single act of user of the trade mark may be sufficient; I am not saying for a moment that that is not so; but in a case where one single act is relied on it does seem to me that that single act ought to be established by, if not conclusive proof, at any rate overwhelmingly convincing proof. It seems to me that the fewer the acts relied on the more solidly ought they to be established…
[20] Justice Lang then referred to the judgment of Ronald Young J in Royal New Zealand Yacht Squadron Ltd v Daks Simpson Group Plc and said, as regards that case:9
Ronald Young J held that the Assistant Commissioner had wrongly determined that the appellant had established a prima facie case as to non-use. Although the Judge decided the appeal on that basis, he went on to express the view that the respondent had failed to establish there had been bona fide use of the trade mark during the period in question. In this regard the Judge said:
[43] Although not necessary for this decision I consider whether the Respondent's reply was sufficient to establish bona fide use if the Appellant had established prima facie use. I agree with the view of the Assistant Commissioner that the sale of 11 squadron jackets in five years is not at all bona fide use of a trade mark. Firstly, it had nothing to do with the trade mark for women's outer clothing, boots, shoes and slippers. Secondly, the use is too infrequent. Here there was one shop in one city of New Zealand selling 11 items of clothing in a period of five years. This is not a description of bona fide use10 of a trade mark.
8 At [41] (footnote omitted).
9 At [46], citing Royal New Zealand Yacht Squadron v Daks Simpson Group Plc [2002] NZAR 187.
10 The term “bona fide use” was used in the previous Act (Trade Marks Act 1953). It would appear to be materially the same as the term “genuine use” in the current Act.
[21] Justice Lang next referred to a judgment of Dobson J in Sambbasivam v Chetty.11 That was an appeal against a decision by an Assistant Commissioner to revoke a trade mark for non-use. The owner of the trade mark was based in Mumbai and produced clothing for women. The owner held two trade marks for goods comprising textiles, saris, headgear and footwear. The owner relied upon two isolated sales of saris to customers in New Zealand in opposing the application for revocation.
[22] Sambbasivam provides a useful illustration of a point that Ms Glover makes, namely that context is everything. Dobson J accepted that in the particular circumstances of that case, two isolated sales were sufficient. He said:12
I consider that the activity qualifies as genuine when such a small number of dealings might in other contexts not qualify as such, because of the nature of the goods in respect of which the mark is used. Two transactions in the space of the relevant 3-year period in other contexts such as, say, a high volume manufacturing business, might be so insignificant as to not justify a finding that the use is genuine. However, business on a very modest scale as an adjunct to a principal business in Mumbai and branches in South Africa, Malaysia, Singapore and Dubai may qualify as genuine without the same minimum level of activity that would be required in other contexts to establish its genuine character.
[23] In Metalman the activity in question was an advertisement on one occasion. There was no dispute that that particular activity had occurred. Justice Lang concluded that although the use of the trade mark on a single occasion undoubtedly amounted to minimal use during the three year period, on the authorities as they stand, that is not the statutory test. The Judge concluded that the use of the trade mark in the newspaper advertisement amounted to genuine use in terms of s 66(1)(a) of the Act.13
11 Sambbasivam v Chetty (2011) 94 IPR 214 (HC).
12 At [46].
13 Metalman New Zealand Ltd v Scrapman BOP Ltd, above n 6, at [51].
[24] Ms Glover also referred the Court to cases which describe s 66(1)(a) as the “use it or lose it” provision.14 The following statement by Jacob J, cited by the Assistant Commissioner makes the point:15
[19](a) There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.
[25] The same point was made by Stevens J in Heinz Wattie’s Ltd v Goodman Fielder Consumer Foods Pty Ltd as follows:16
Another aspect of the interests of justice that applies in this case is the importance of ensuring that the trade mark register is kept “clean”. There is a public interest in ensuring that trade marks which are not used or have been suspended for the required period are not allowed to remain on the register. This public interest in favour of “cleaning” the record and potentially enhancing competition in the marketplace is no doubt the policy rationale underlying the statutory provision allowing applications for revocation.
The issue of the public interest was addressed in the case of La Chemise Lacoste v Crocodile Garments Ltd. There, His Honour stated at [22]:
Clearly the public do have an interest in ensuring that the Trade Marks register is clean and only registers those trade marks which are being actually used. If a trade mark is not in use for a significant period, then others should have the opportunity if they wish to use the trade mark in their business. Thus the public has an interest in a commercial sense in ensuring a fair opportunity for those who wish to register a trade mark and a fair opportunity to use the mark to promote their business.
[26] The owner of a challenged mark can rebut a non-use application by proving that there was genuine use of the trade mark, by the owner for the time being, in relation to the relevant goods or services. The onus of proof of establishing genuine use of the trade mark during the relevant period lies with the registered owner.17
14 Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 at [51] citing Tasman Insulation New Zealand Ltd v Knauf Installation Ltd [2014] NZHC 960, (2014) 108 IPR 162 at [72].
15 Decision at [6] citing Laboratoire De La Mer Trade Marks [2002] FSR 51 (Ch) 790, as endorsed by the Supreme Court in Crocodile International Pte Ltd v Lacoste, above n 14, at [51]. See also the Supreme Court’s discussion of “use it or lose it” at [78]–[80].
16 Heinz Wattie’s Ltd v Goodman Fielder Consumer Foods Pty Ltd HC Auckland CIV-2007-404-6946, 10 December 2008 at [47]–[48] (citation omitted).
17 Trade Marks Act, s 67.
[27] The trade mark owner must provide careful and convincing evidence to demonstrate that there has been genuine use of the mark in relation to each of the relevant goods or services:18
Our Act, sensibly, explicitly requires the trade mark owner to prove use of his [or her] mark, when non-use is alleged. Probably that is implicit under the Regulation too, for who is to know most about the details of use other than the owner of the mark? …
In the present cases, use was not proved well. Those concerned with proof of use should read their proposed evidence with a critical eye — to ensure that use is actually proved — and for the goods or services of the mark in question.
All the t’s should be crossed and all the i’s dotted. …
[28] If a registered owner does not demonstrate that it made genuine use of the trade mark in relation to the specified goods during the relevant period, the Commissioner or Court does not have any residual discretion to allow the mark to remain on the register.19
[29] If grounds for revocation exist for only some of the goods, the mark must be revoked in respect of those goods.20
[30] Where the registration of a trade mark is revoked to any extent, the rights of the registered owner cease on the date of the application for revocation of the registration of the trade mark; or, if the Commissioner or Court is satisfied that the grounds for revocation of the registration of the trade mark existed at an earlier date, then that date.21
Submissions regarding application of principles in decision
[31] Ms Glover submits that although the Assistant Commissioner referred to the above general principles he erred in law by failing to give sufficient weight to the principles and authorities establishing that there is an obvious and strong interest in unused trade marks being removed from the register.
18 Laboratoire De La Mer Trade Marks, above n 15, at [8]–[9].
19 Crocodile International Pte Ltd v Lacoste, above n 14, at [97].
20 Trade Marks Act, s 68(1)(b).
21 Trade Marks Act, s 68(2).
[32] Ms Glover further submits that the Assistant Commissioner erred by giving insufficient weight to the principle that where there is limited use of a trade mark, compelling and conclusive evidence of that use is required; and that he gave insufficient weight to the statutory requirement placing the onus on the trade mark owner to provide proof of the use of the trade mark relating to the relevant goods during the non-use period.
Was there use of the FEEL ALIVE trade mark?
[33] Ms Glover submits that the Assistant Commissioner was incorrect to draw an inference that the FEEL ALIVE trade mark was used by Ms Morris. A finding should have been made that Ms Morris failed to discharge the onus of establishing genuine use of the FEEL ALIVE trade mark in relation to the relevant goods during the non-use period.
[34] She refers to the Assistant Commissioner’s statement that Ms Morris’ evidence was “scant” and that much of it could not be placed in the non-use period.22
[35] Ms Glover notes the Assistant Commissioner’s acknowledgement that his finding that there was sufficient evidence was a “close call” but he considered it a “reasonable inference to draw”, based on what Ms Morris said in her affidavit and the exhibits, that there had been use of the FEEL ALIVE trade mark during the non-use period.23
The evidence of purported sale
[36] Ms Morris said in her affidavit dated 29 June 2022 that over the last three years the promotion of the Feel Alive business had declined because of a bereavement and some serious health issues.24
[37] It is apparent from the photographs of the website annexed to Ms Morris’ affidavit that sales ceased shortly after the commencement of the non-use period. The
22 Decision at [34].
23 Decision at [34].
24 I note that this was not relied upon as special circumstances in s 67(b) of the Trade Marks Act.
alleged final “sale” appears to have been on 21 April 2019. There were no entries prior to 21 April 2019 in the non-use period. On dates after 21 April 2019 all the entries as shown in the photograph of the website are recorded as “Failed”.
[38] The purported sale on 21 April 2019 has the word “Processed” with what appears to be a customer name, CB,25 on the same line on the photograph of the website.
[39] I accept the submission made by Ms Ryan, counsel for Globeride who addressed the Court in relation to the evidence, that it is not clear, firstly, whether a sale actually occurred. There is another photograph of the website which purports to show the details of CB’s order. The photograph appears to be of the tab for “Order Details”. It has the same customer name and again the order status as “Processed”. However, despite there being tabs available for “Payment Details” and “Shipping Details” which Ms Morris could have provided to confirm Feel Alive Ltd received payment and fulfilled the order described as “Processed”, she did not do so. As well, on the screenshot it is apparent that an invoice number could have been generated.
[40] I accept Ms Ryan’s submission that if payment had been received and the order fulfilled, it would have been a relatively simple matter for Ms Morris to provide evidence of that purported sale. There was no such evidence of that and the evidence such as it is does not conclusively establish that any sale occurred.
[41] Ms Ryan’s alternative argument is that if the Court were to find a sale did in fact occur on 21 April 2019, it is not clear whether any such sale related to any of the specified goods, being articles of clothing or whether it was a sale for something else. No details are provided by Ms Morris of what the purported sale related to. The photograph of the website referred to in [39] above indicates that there is a “Products” tab available. As Ms Ryan submits, if the alleged sale included any specified goods bearing the FEEL ALIVE trade mark, it would have been a relatively simple matter for Ms Morris to provide evidence of that.
25 I have anonymised the customer’s name.
[42] Also, as noted in [39] above, the particular webpage indicates an option to generate an invoice or an invoice number for the order. Had Ms Morris provided such evidence, then any invoice may well have identified the products that were ordered. But no such invoice was exhibited to Ms Morris’ affidavit.
[43] Further, the evidence that is exhibited indicates that around 21 April 2019 Feel Alive Ltd was advertising dō TERRA essential oils and accessories and Wellness Boxes. Having regard to that evidence, the Court is simply not in a position to be satisfied that even if the sale occurred on 21 April 2019, that it was for specified goods, rather than one of the dō TERRA products. In her affidavit Ms Morris simply refers to “online sales” and provides no evidence of which product(s) any purported sales related to.
[44] In relation to the purported sale on 21 April 2019 and based on the evidence discussed thus far, Ms Morris has not crossed the t’s and dotted the i’s. The evidence is inconclusive and does not establish any use, let alone any “genuine use” of the FEEL ALIVE trade mark for the purposes of creating or preserving the market for the specified goods.
Current sales via website at feelalive.co.nz
[45] There is, however, further evidence relied upon by Ms Morris in addition to the purported sale on 21 April 2019 which I now consider. But first I note the comment made by the authors of Trade Marks in Practice as regards evidence in non-use revocation proceedings:26
Particular care must be taken when preparing the evidence in response to a non-use revocation application.
The usual sequence for filing evidence does not apply — when filing its counter-statement, the trade mark owner files evidence in support of it [sic] opposition to revocation (i.e. showing its use of the mark).
A distinction may be drawn between actual use and evidence of that use. It is the latter that is determinative. Bald assertions in evidence statements on behalf of the owner that a mark has been used are given little weight by the Court or by Assistant Commissioners.
26 Rob Batty and Kevin Glover Trade Marks in Practice (5th ed, LexisNexis, Wellington, 2024) at [TMA66.11].
[46] Ms Morris makes an unsupported statement in her affidavit that Feel Alive clothing is currently available for purchase through the business’ website at and also via a link on the Feel Alive Facebook site that contains a link to the website. However the screenshots from the website that she exhibits are undated.
[47] Ms Morris says that “the Feel Alive branded clothing continues to be promoted and offered for sale through the website and we continue to receive and fulfil online orders”.
[48] However, even if Feel Alive Ltd was selling its remaining stock as at 29 June 2022, the date of Ms Morris’ affidavit, this was after the non-use period and cannot be considered for the purposes of the application for revocation.
[49] The Assistant Commissioner in his decision appeared to rely upon the copyright notice for the website as being 2020.27 The Court understands that a copyright notice is usually updated when there has been a change to the website. However, in this case there is no evidence of the change or who made the change or whether any such change was authorised by Ms Morris.
[50] There is no evidence of any sales or even any purported failed orders in 2020. There is no evidence of any changes to the website being made or authorised by Ms Morris. The Feel Alive Facebook page indicates the only commercial activity occurring in 2020 related to the dō TERRA products that were promoted. The Court cannot be satisfied that any update to the website (and accordingly, the copyright notice) was a change authorised by Ms Morris rather than say by the website host for example.
Garments
[51] Ms Morris makes an unsupported statement that: “All garments that we have offered for sale and sold have the Feel Alive wording and logo on the label inside the garment plus a heat transfer of the logo on the outside of the garment.” But Ms Morris
27 Decision at [32].
has not provided any supporting evidence of garments featuring the mark, whether within the non-use period or otherwise. The website screenshots referred to by the Assistant Commissioner do not show the clothing as bearing the FEEL ALIVE trade mark and none of the garment listings refer to them being FEEL ALIVE branded clothes.
Facebook page
[52] The extracts from the Facebook page are undated other than a Facebook post from 3 March 2020. However, that post advertises a dō TERRA diffuser product, not clothing. The dō TERRA diffuser products do not fall within the class 25 goods and do not bear the FEEL ALIVE trade mark.
[53] There is another exhibit which is a single post on the Feel Alive NZ Facebook page from 27 April 2020. However the advertisement does not contain any detail about the products being promoted. It simply contains the words “NZ designer and made if [sic] Fiji …”, and refers to free shipping in New Zealand. The image is of poor quality and no branding is discernible on the clothing in the photograph.
Sales stationery
[54] There are two exhibits of “sales stationery” being invoices or receipts. However, they are issued by Feel Alive Ltd not Ms Morris and they are undated. There is no evidence that they were used during the non-use period.
Promotional materials
[55] There is an exhibit which includes photographs which do not indicate when they were taken or whether they were taken in New Zealand (some appear to be of trade fairs). The exhibit also includes two social media posts. However one is dated 13 May 2014 and one is dated 25 June 2014, both well before the non-use period.
Conclusion
[56] Drawing all the above threads together, I consider the Assistant Commissioner erred in drawing the inference that there had been a use of the FEEL ALIVE trade
mark in the non-use period. I consider the evidence produced by Ms Morris falls well short of the requirement to establish compelling and conclusive evidence of use during the non-use period.
Was there a use of the trade mark in connection with clothing?
[57] Although the Assistant Commissioner stated that there is much of Ms Morris’ evidence that he was satisfied failed to show use of the FEEL ALIVE mark for clothing during the non-use period, he nevertheless considered there was some support for use having been made of the mark. He referred to Ms Morris’ statement as to the use of the trade mark on clothing in 2020 and he said there was some corroboration for that.28
[58] The corroboration the Assistant Commissioner referred to was the undated screenshots of Feel Alive Ltd’s website and the single Facebook post from 27 April 2020. I do not consider that the evidence supports a finding of use of the FEEL ALIVE trade mark on clothing. The garments shown do not clearly bear the FEEL ALIVE trade mark.
[59] The Court is simply left with Ms Morris’ unsupported assertions. I do not consider that is sufficient.
Was there use by the registered owner?
[60] Ms Glover submits, that even if use of the FEEL ALIVE trade mark during the non-use period was established (which is denied) this was not use by the registered owner, Ms Morris. Accordingly, that does not constitute authorised and controlled use within the meaning of s 7(2) of the Act. All examples of use in Ms Morris’ affidavit show use of the trade mark by Feel Alive Ltd and not Ms Morris.
[61] Ms Glover submits that the Assistant Commissioner erred in fact and law by inferring that Ms Morris controlled any relevant use of the trade mark by Feel Alive Ltd.
28 Decision at [31].
[62] Use of a trade mark by the owner can include use by a person other than the owner but only if that use is authorised by, and subject to, the control of the owner. Section 7(2) of the Act provides:
7 Meaning of use of trade mark
…
(2)References in this Act to use of a trade mark by the owner includes use by a person other than the owner if that use is authorised by, and subject to, the control of the owner.
…
[63] Ms Morris’ affidavit does not contain any details of the licence she says was granted to Feel Alive Ltd and she did not exhibit any written licence agreement. Neither has Ms Morris provided any evidence to show how she controlled the use of the trade mark by Feel Alive Ltd.
[64] The owner of the website is Feel Alive Ltd, not Ms Morris, the owner of the FEEL ALIVE trade mark. There is no evidence as to whether Ms Morris authorised the content or garments appearing on the website or controlled the content or representations on the website.
[65] Ms Morris gave bare evidence in her affidavit that Feel Alive Ltd uses the trade mark with her authority and licence. The Assistant Commissioner was “sceptical” that there was a licence but considered Ms Morris approved and controlled the use of the FEEL ALIVE trade mark because she was the director of Feel Alive Ltd.29
[66] The Full Court of the Federal Court of Australia’s discussion in Lodestar Anstalt v Campari America LLC on the meaning of “control of the owner”, in the context of the Australian Trade Marks Act 1995 (Cth), is helpful:30
Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered
29 Decision at [39].
30 Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, (2016) 120 IPR 1 at [97] and [169]. That case concerned the meaning of “under the control of the owner” within the definition of “authorised use” in s 8 of the Trade Marks Act 1995 (Cth).
owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control …
… regardless of the form control might take — it is the exercise of control that matters, not merely the right to do so.
[67] I do not consider Ms Morris has provided evidence as to the exercise of control. She may well have been active in the business before the non-use period but her evidence is that she was unable to devote as much time and effort to the business during the non-use period. I do not consider there is evidence that would support a finding that Ms Morris authorised or controlled any use of the FEEL ALIVE trade mark that occurred during the non-use period.
[68] It follows then that any alleged use of the FEEL ALIVE trade mark by Feel Alive Ltd is not use of the mark within the meaning of s 7(2) of the Act.
[69] Despite the Assistant Commissioner agreeing: that the lack of a written agreement; the lack of detail about the control exercised by Ms Morris over Feel Alive Ltd and that he was “sceptical” about whether there was a licence, he concluded that:31
As a practical matter Ms Morris and Feel Alive Ltd are one and the same. They have a unity of purpose and it is commercially unrealistic not to infer Ms Morris controlled the use of the mark by Feel Alive Ltd.
[70] I consider the Assistant Commissioner erred in reaching that conclusion. First, it was not supported by the factual findings that he made. Second, it is not consistent with company law: a company and its shareholder or director are not one and the same.
Result
[71]The appeal is allowed.
31 Decision at [39].
Relief
[72]I make the following orders:
(a)The decision of the Assistant Commissioner to allow trade mark registration no. 986073 FEEL ALIVE to remain on the register is set aside.
(b)Trade mark registration no. 986073 FEEL ALIVE is revoked. It is removed from the Register of Trade Marks with effect from 26 April 2022, being the date the application for revocation was filed.
Costs
[73] Globeride seeks costs both in this Court and in relation to the decision of the Assistant Commissioner. It is not possible to make an order as part of this judgment. That is because this Court earlier directed that notwithstanding counsel’s advice that Ms Morris did not intend taking steps, she was given leave to be heard in respect of any application for costs.32
[74] I direct that counsel for Globeride file and serve on Ms Morris a memorandum in support of an application for costs within five working days of the date of this judgment. The memorandum should be no more than three pages excluding attachments (which should include a schedule of costs sought).
[75] If Ms Morris intends to oppose the application for costs she is to file and serve a memorandum within five working days of the date of service of Globeride’s memorandum on her. Ms Morris’ memorandum should similarly not exceed three pages (excluding any attachments).
[76]I will determine costs on the papers.
Gordon J
32 Minute of Robinson J dated 19 March 2024.
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