International Consoidated Business Pty Ltd v S C Johnson & Son Inc

International Consolidated Business Pty Ltd (ICB) appealed against a decision of the Trade Marks Registry which found that ICB was not entitled to registration of the ZIPLOC trade mark in respect of plastic bags and plastic film for wrapping purposes in class 16. S C Johnson & Son, Inc (Johnson) opposed ICB’s application on the grounds that ICB was not the owner of the trade mark and that registration would be contrary to the Fair Trading Act 1986. ICB’s application was held in abeyance as Johnson’s application, filed earlier, had priority. ICB argued that the registration should take effect from 22 November 2001, the date of application, or from 7 December 2001, the date of the revocation of the earlier registrations. The primary issue for the court was whether the Trade Marks Act 2002 applied the date of the application for revocation as the effective date of revocation, as opposed to the date when the order for revocation was made.

The court found that the relevant provision of the Act, s 68(2), operated to backdate the effective date of revocation to the date of the application for revocation. The court held that the revocation of the earlier registrations of the trade mark was effective from the date of the application for revocation, meaning that ICB’s application should take effect from the date of application. This was significant because it meant that the date of the application for revocation was the relevant date for determining priority of applications for registration. The court also found that ICB was not entitled to registration because it was not the owner of the trade mark and that registration would be contrary to the Fair Trading Act 1986.

The court found in favour of Johnson. ICB’s application for registration was dismissed and the order for revocation of Johnson’s registration was affirmed. ICB’s appeal was dismissed with costs.