Renault SAS v Always Hire Limited - [2023] NZHC 304

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

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

CIV-2022-485-000084

[2023] NZHC 304

UNDER the Trade Marks Act 2002

IN THE MATTER OF

Trade Mark Registration No. 704656 (Master)

BETWEEN

RENAULT S.A.S.

Appellant

AND

ALLWAYS HIRE LIMITED

First Respondent

COMMISSIONER OF TRADE MARKS

Second Respondent

Hearing: 20 February 2023

Appearances:

J Oliver-Hood for Appellant

No appearance for First Respondent
S P Connolly and S M Perera for Second Respondent

Judgment:

27 February 2023

JUDGMENT OF VAN BOHEMEN J

This judgment was delivered by me on 27 February 2023 at 12:00 pm Pursuant to Rule 11.5 High Court Rules

Registrar/Deputy Registrar Date……………………………..

Counsel/Solicitors:

J Oliver-Hood, Auckland Capstone Law, Auckland Crown Law, Wellington

RENAULT S.A.S. v ALLWAYS HIRE LTD [2023] NZHC 304 [27 February 2023]

[1] The appellant, Renault S.A.S., appeals the decision of the second respondent, the Assistant Commissioner of Trade Marks, revoking Renault’s trade mark No 704656 MASTER for Class 12 goods.

[2] The Assistant Commissioner’s decision followed an application by the first respondent, Allways Hire Ltd, for revocation of the Renault trade mark on the basis it had not been put to genuine use for a three-year period. Allways Hire applied for revocation in order to progress its own application for registration of the trade mark MASTER for Classes 7, 37 and 44.

[3] Renault did not respond to the notice by the Intellectual Property Office of New Zealand (IPONZ) of the Allways Hire application for revocation. Renault did not file a counterstatement or evidence by the deadline of 16 November 2021. Nor did it seek any extension of the deadline.

[4] The Assistant Commissioner found that Renault had not discharged its onus of proving it had made genuine use of its trade mark during the applicable non-use period and revoked the Renault trade mark as of 24 November 2020.

[5] Renault appeals the Assistant Commissioner’s decision. Renault seeks leave to adduce further evidence to show that it has made widespread, continuous and genuine use of its MASTER mark.

[6] Renault has also lodged a new application for registration of the MASTER mark in the event its appeal is unsuccessful.

[7] The Commissioner opposes Renault’s appeal and its application to adduce additional evidence. The Commissioner says Renault is attempting to remedy its failure to engage in the initial process, which is contrary to the scheme of the Trade Marks Act 2002 (the Act) and well-established principles regarding appeals. The Commissioner also says it is not certain that the new evidence, if it had been provided to the Assistant Commissioner, would have resulted in the revocation being declined.

[8] The Commissioner also says that any interests Renault may have in the MASTER mark can be taken into account as part of opposition procedures to Allways Hire’s application for registration of its MASTER mark and Renault’s own new application for registration of the MASTER mark.

[9] With the leave of the Court, Allways Hire did not appear at the hearing of the…

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.

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Details

Case: [2023] NZHC 304
Decision Date: 27 February 2023

CaseChat Overview and Summary

In the High Court of New Zealand, Renault SAS appeals the Assistant Commissioner of Trade Marks' decision to revoke Renault's trade mark "MASTER" for Class 12 goods. The Assistant Commissioner revoked the trade mark after finding Renault had not provided sufficient evidence to prove the mark had been in genuine use during the required period. Renault seeks leave to adduce further evidence to demonstrate it had used the mark, but the Commissioner opposes this application.

The court's task was to determine whether Renault's application for leave to adduce further evidence should be granted. The court found Renault had failed to comply with the statutory requirements to provide evidence at the initial revocation hearing, and had provided no explanation for this failure. The court held that, given the principles established in Court of Appeal decisions, Renault's application could not succeed because it did not demonstrate compelling circumstances for the omission of the evidence at the first hearing.

The court dismissed Renault's application for leave to adduce further evidence and also dismissed Renault's appeal against the Assistant Commissioner's decision. The court considered the implications of admitting the evidence and the related public interest considerations but found that upholding the Assistant Commissioner's decision was the appropriate course of action. The court also noted that Renault's use of the mark might not have been comprehensive enough to justify the scope of the registration.

The court ordered Renault to file a memorandum on costs by 20 March 2023, with any reply by 10 April 2023. The court indicated that, given the outcome of the appeal, Renault's prospects of avoiding an order for costs were low.

Orders