Red Kangaroo Beverages Pty Limited v Asco Group Limited

[2021] NZHC 2138

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

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

CIV 2021-485-91

[2021] NZHC 2138

UNDER

the Trade Marks Act 2002

IN THE MATTER OF

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

[2021] NZIPOTM 1, dated 29 January 2021

BETWEEN

RED KANGAROO BEVERAGES PTY LIMITED

Appellant

AND

ASCO GROUP LIMITED

Respondent

Teleconference:

16 August 2021 at 10 am

Counsel:

B Cain for Appellant

No appearance for Respondent

Judgment:

17 August 2021

JUDGMENT OF MALLON J

[1]                  The appellant (Red Kangaroo) appealed under the Trade Marks Act 2002 from a decision of the Assistant Commissioner of Trade Marks concerning two trade mark applications lodged by Red Kangaroo.

[2]                  The background to the appeal is two “Madrid” applications made by Red Kangaroo.  Such  applications  proceed  from   international   registrations   with New Zealand as a designated territory or jurisdiction. In accordance with the process for Madrid applications, Red Kangaroo’s applications were accepted by the Intellectual Property Office for registration and published. One of the applications (designation number 1081934) was for classes 5, 25 and 32. The other application

RED KANGAROO BEVERAGES PTY LIMITED v ASCO GROUP LIMITED [2021] NZHC 2138 [17 August 2021]

(designation number 1094752) was for classes 5, 25, 28, 32 and 43. Once published, there is a period of three months for notices of opposition. The respondent filed oppositions to both applications in relation to class 25 only.

[3]                  The proceedings then followed their usual path towards a determination by the Assistant Commissioner except that, unusually, neither party filed any evidence. In the absence of such evidence, the sole ground of opposition effectively became        s 25(1)(b) of the Trade Marks Act.1 This required the Assistant Commissioner to consider the notional uses of the respective marks.

[4]                  Along the way, Red Kangaroo successfully applied to partially revoke one of the respondent’s marks for non-use except in relation to “footwear”. This meant that the respondent’s specification for class 25 became for footwear only.

[5]                  On 29 January 2021 the Assistant Commissioner found in favour of the respondent on both applications in relation to class 25. On 12 February 2021 Red Kangaroo lodged its appeal from the Assistant Commissioner’s decision.

[6]                  Prior to that, on 10 February 2021, Red Kangaroo applied to fully revoke the respondent’s registrations on which the Assistant Commissioner’s determination was based. If Red Kangaroo were to have been successful on this application, it would have cleared the way for Red Kangaroo’s applications to be registered irrespective of the Assistant Commissioner’s determination. This is because it would mean that there was no overlap between the marks.

[7]                  On the extant appeal that is before this Court, the Court can assess the register at the time of entry onto the register so that later events can be taken into account.2 The appellant had been granted leave to file the application for revocation and associated material. This was relevant to Red Kangaroo’s appeal ground that the respondent’s marks had not been used and could be revoked.

1      The opposition had also relied on s 32 of the Trade Marks Act but, in the absence of evidence, it could not and did not succeed.

2      International Consolidated Business Proprietary Limited v SC Johnson & Son Incorporated

[2020] NZSC 110 at [45].

[8]                  Red Kangaroo and the respondent then had settlement discussions. This led to an executed settlement agreement pursuant to which Red Kangaroo agreed to remove footwear from its class 25 specification of both subject applications and, in exchange for which, the respondent signed a consent to the registration of the two subject applications. This meant that there was consent to the registrations in class 25, which had been the only ground of objection.

[9]                  Section 26(a) of the Trade Marks Act provides that the Commissioner must register the appellant’s marks if the respondent has consented to those registrations. Section 173 of the Trade Marks Act provides that, in determining an appeal, the Court may exercise any of the powers that could have been exercised by the Commissioner in relation to the matter to which the appeal relates. Rule 20.19 of the High Court Rules 2016 provides that, after hearing an appeal, the Court may make any order it thinks just and may give the decision-maker any direction it thinks fit relating to considering or determining any matter directed to be considered or determined.

[10]Pursuant to these provisions, the parties seek the following orders by consent:

(a)an order that special circumstances have arisen since the decision in [2021] NZIPOTM 1, meaning that the exception provided for under   s 26(a) of the Trade Marks Act now applies and the Commissioner must register  New   Zealand   Trade   Mark   Application   No. 1081934 (IR 1270379) KANGURU (Word) in class 25 (as amended) and New Zealand Trade Mark Application No. 1094752 (IR 1405490)

in class 25 (as amended);

(b)an order that New Zealand Trade  Mark  Application  No. 1081934 (IR 1270379) KANGURU (Word) in classes 5, 25 (as amended) and 32 proceed to registration; and

(c)New Zealand Trade Mark Application No. 1094752 (IR 1405490)

proceed to registration in classes 5, 25 (as amended), 28,

32 and 43.

[11]              Having heard from counsel for the appellant, and the respondent being content for the Court to hear only from counsel for the appellant, I am satisfied it is appropriate to make those orders by consent. I do so accordingly.

Mallon J