Trade Me Limited v Trade Jobs NZ Limited
[2024] NZHC 1513
•10 June 2024
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE
CIV-2023-404-425
[2024] NZHC 1513
UNDER the Trade Marks Act 2002 and the Fair Trading Act 1986 BETWEEN
TRADE ME LIMITED
Plaintiff
AND
TRADE JOBS NZ LIMITED
First Defendant
COLLEEN MARGARET GETLEY
Second DefendantTONY ALAN GETLEY
Third Defendant
GETLEY LIMITED
Fourth Defendant
Hearing: 18 April 2024 Appearances:
K T Glover and PJM Gerard for the Plaintiff E Gray and L Carter for the Fourth Defendant
Judgment:
10 June 2024
JUDGMENT OF GAULT J
This judgment was delivered by me on 10 June 2024 at 4:00 pm pursuant to r 11.5 of the High Court Rules 2016.
Registrar/Deputy Registrar
Solicitors / Counsel:
……………………………………
Mr K T Glover, Barrister, Auckland
Mr J Scragg and Mr PJM Gerard (plaintiff’s instructing solicitor), Duncan Cotterill, Auckland and Wellington (respectively)
Mr E Gray and Ms L Carter, Barristers, Auckland
Ms K Poole (fourth defendant’s instructing solicitor), kplegal Ltd, Auckland
TRADE ME LTD v TRADE JOBS NZ LTD [2024] NZHC 1513 [10 June 2024]
[1] The fourth defendant (Getley) seeks an order that the plaintiff (TML) file and serve an amended defence to counterclaim that provides more explicit pleading and further and better particulars of TML’s reply and defence to counterclaim.
[2] In the context of a dispute concerning TML’s trade marks, the issues on this application relate to the pleading of TML’s defence to Getley’s counterclaim seeking partial revocation of two of TML’s trade marks relating to “Trade Me Jobs” on the ground of non-use (other than for the services of “internet and mobile application recruitment advertising services”). In its defence to counterclaim, TML denies the allegations of non-use. Getley seeks more specificity.
[3] The hearing of the application took place after discovery, which TML considered would address Getley’s concern. However, Getley says that use cannot be seen from TML’s discovery and maintains that an amended pleading with particulars is required. During the hearing there was a measure of consensus narrowing the issues, but the parties were still unable to resolve the application without Court determination.
Factual background
[4] TML’s business includes the Trade Me auction/marketplace site and sub-sites. Relevantly, TML launched the TRADE ME JOBS brand relating to employment vacancies in around 2006. It launched the TRADE ME JOBS App in around 2014.
[5] TML is the owner of the registered trade marks (among others) numbered 762112 (TRADE ME JOBS word mark) and 1054643 (series mark for five TRADE ME JOBS combination marks).
[6]Trade mark 762112’s deemed date of registration was 17 January 2007.
[7]Trade mark 1054643’s deemed date of registration was 7 November 2016.
[8] From at least July 2021, Getley (as the other defendants’ operating company) commenced providing services by way of a job-seeking platform for tradespeople and their employers in New Zealand under the name and logo TRADE JOBS NZ through its website and associated social media channels.
[9] TML claims (in its amended statement of claim dated 15 May 2023) that the defendants have infringed TML’s registered trade marks (among other things).
[10] Getley filed a counterclaim dated 26 May 2023 seeking partial revocation of trade marks 762112 and 1054643 under s 65 of the Trade Marks Act 2002 on the ground of non-use other than for the services of “internet and mobile application recruitment advertising services”.1
[11] In TML’s defence to counterclaim dated 12 June 2023, it denied the allegations of non-use. It did so without providing particulars of asserted use.
[12] The relevant parts of the pleadings and the particulars sought were helpfully summarised in a table, which I attach as schedule 1 to this judgment.
[13] Following TML’s defence to counterclaim, Getley’s solicitors sought particulars of TML’s use of the trade marks in correspondence. TML’s solicitors responded that the reply and defence to counterclaim were properly pleaded and no further particulars were required. Much correspondence followed, with some particulars provided.
[14] In August 2023, TML deleted some of the goods and services from trade mark registration 1054643 by way of partial cancellation under s 61 of the Trade Marks Act 2002. However, neither party filed an amended pleading.
[15]On 29 September 2023, Getley filed this interlocutory application.
[16]As indicated, discovery has occurred but did not resolve the application.
[17] By letter dated 28 March 2024, TML’s solicitors provided a table with details of use by reference to the specifications of those marks other than the deleted goods and services. Getley’s solicitors were not satisfied with the table. They sought various confirmations, which TML’s solicitors declined to provide. A reformatted version of
1 Class 35 of the Nice Classification of Goods and Services (12th ed).
the table with details of use relied on by TML is attached as schedule 2 to this judgment.
Orders sought in Getley’s application
[18] The specific orders sought by way of more explicit pleading and further and better particulars are:
1.1For paragraphs 113 and 114 of the Defence to Counterclaim, providing particulars of any asserted use of trade mark registration no. 1054643 by reference to the goods and services in the specification (being the specification as at the date of Getley’s Statement of Defence to First Amended Statement of Claim, and Counterclaim dated 25 May 2023 (Counterclaim)), including:
1.1.1Each good or service for which use is asserted;
1.1.2The time period or periods of such asserted use;
1.1.3The trade channels for, and identifying characteristics or indicia of, such asserted use.
1.2For paragraphs 120 and 121 of the Defence to Counterclaim, providing particulars of any asserted use of trade mark registration no. 762112 by reference to the services in the specification (being the specification as at the date of the Counterclaim), including:
1.2.1Each service for which use is asserted;
1.2.2The time period or periods of such asserted use;
1.2.3The trade channels for, and identifying characteristics or indicia of, such asserted use.
1.3Recording TML’s admission that Getley is an aggrieved person in terms of section 65 of the Trade Marks Act 2002 (Act) for the purposes of the first and second counterclaim.
1.4Providing, having regard to the further particulars required by Orders
1.1 and 1.2 and in answer to paragraphs 115 and 122 of the Counterclaim, a more explicit pleading of a fair specification for each of trade mark registration no. 1054643 and trade mark registration no. 762112.
[19] Getley’s submissions acknowledged that orders 1.1 and 1.2 could be provided by way of a version of the table of asserted use.
Applicable principles
[20] The applicable principles relating to pleadings and particulars are settled. As the Court of Appeal said in Price Waterhouse v Fortex Group Ltd:2
… Pleadings which are properly drawn and particularised are, in the case of any complexity, if not in all cases, an essential road map for the Court and the parties.
…
… both the Court and opposite parties are entitled to be advised of the essential basis of a claim or defence, and all necessary ingredients of it, so that subsequent processes and the trial itself can be conducted against recognisable boundaries. Neither the Court nor opposite parties should be placed in the position of having to deal with a proposition of whose substance adequate notice has not been given in the pleadings.
…
In marginal cases, it is better to avoid generalities and rules of thumb, and to return to principle. The pleader and Court simply ask “in the circumstances of this claim, is that statement sufficiently detailed to state a clear issue and inform the opposite party of the case to be met?
…
… What is required is an assessment based on the principle that a pleading must, in the individual circumstances of the case, state the issue and inform the opposite party of the case to be met. As so often is the case in procedural matters, in the end a common-sense and balanced judgment based on experience as to how cases are prepared and trials work is required. It is not an area for mechanical approaches or pedantry.
Issues
[21]The issues to be determined are:
(a)whether TML’s denial of non-use is sufficiently detailed;
(b)whether TML must admit that Getley is an aggrieved person in terms of section 65 of the Trade Marks Act 2002; and
(c)whether TML must plead a fair specification.
2 Price Waterhouse v Fortex Group Ltd CA179/98, 30 November 1998 at 17-19. See also
Body Corporate 74246 v QBE Insurance (International) Ltd [2015] NZHC 1360 at [18].
Discussion
TML’s denial of non-use
[22] As indicated, Getley seeks particulars of any asserted use of each trade mark by reference to each good or service in the specification, time periods, trade channels and identifying characteristics or indicia. Mr Gray, for Getley, said that Getley is not asking for evidence. He submitted that the table provided with details of use relied on by TML is inadequate.
[23] Mr Glover, for TML, maintained that the table with details of use is sufficient. He submitted that Getley is seeking admissions in the guise of particulars, that TML has denied non-use and that the adequacy of use is a matter for trial. TML’s reluctance to provide further particulars is at least partly influenced by its concern (rightly or wrongly) that Getley’s requests are tactical, aimed at causing expense to TML. Mr Glover submitted that Getley’s counterclaim indicates the defendants have some knowledge of TML’s use.
[24] I make two preliminary points. First, TML’s August 2023 deletion of certain goods and services from trade mark registration 1054643 does not affect the need for a sufficiently detailed denial of non-use. The deletion does not have retrospective effect in relation to TML’s infringement claim or Getley’s partial revocation counterclaim in respect of the deleted goods and services for the earlier period. At the hearing, TML accepted that the deletion should be reflected in an amended statement of claim. Getley can then amend its counterclaim. TML can then address whether it asserts use of the deleted goods and services in the earlier period.
[25] Secondly, while the form of particulars is not mandated, it would be helpful in this case for the table of details of use relied on by TML to be incorporated into an amended defence to counterclaim given the extent of correspondence and so the particulars are easily available to the Court as well as the parties. That should occur. It is no inconvenience since the pleadings are being updated in any event.
[26] In order to assess whether TML’s bare denial of non-use in its defence to counterclaim and its particulars in the table of details of use are sufficiently detailed,
it is necessary to consider the nature of the issue raised on the pleadings. In a case of alleged non-use of a trade mark on a revocation application (in a claim or counterclaim), a denial of non-use inherently involves an assertion of use. In such a case, the onus is on the trade mark owner to prove use.3 A denial of an allegation setting up an affirmative defence is sometimes referred to as a ‘pregnant negative’, and particulars of the affirmative case ought to be delivered.4
[27] Here, it is common ground that the question for the Court is whether the trade mark has been used for the goods and services at issue during the relevant period. Mr Glover accepted that reference to the ‘goods and services at issue’ means it is necessary for there to be use of each aspect of the specification.5 He submitted, however, there is no issue as to the scope of the denial here – that TML’s denial of non-use relates to each of the goods and services in the specification. Mr Gray questioned this; for example, as to whether TML asserts use in relation to goods. Unless TML maintains that its denial of non-use relates to each of the goods and services in the specification, TML should specify those goods and services to which its denial relates.
[28] Relatedly, Mr Gray submitted that the details of use provided by TML in relation to class 9 (computer software etc) are insufficient. Mr Glover’s response was that the goods are the software. In this regard, the dispute is not about the scope of the denial (asserted use) but appears to be whether the use of software in TML’s website or app is use of the mark in this class. The adequacy of the use asserted is a matter for trial, not further pleading or particulars.
[29] Aside from the scope of the denial, Mr Gray submitted that TML needs to be more specific in relation to the relevant service in issue,6 not merely referring to its app or website. It is difficult to address this submission in the abstract. I accept that TML needs to identify its use – the services used in its business activities – with some
3 Trade Marks Act 2002, s 67.
4 Pinson v Lloyds & National Provincial Foreign Bank Ltd [1941] 2 All ER 636 (EWCA) at 641-642.
5 I note Getley’s counterclaim includes, in the alternative if there has been use in respect of some goods or services, a claim for partial revocation in respect of the remaining goods and services.
6 As indicated, Getley accepts that the Trade Me Jobs marks have been used for internet and mobile application recruitment advertising services but not otherwise.
specificity (without needing to stray from particulars into evidence). In doing so, however, it may not be necessary for TML to adopt the formulation sought by Getley (identifying the trade channels for, and identifying characteristics or indicia of, such asserted use). The degree of specificity required may well depend on the relevant service in issue in each class. Again, the adequacy of the use asserted is a matter for trial, not further pleading or particulars.
[30] As Mr Gray ultimately accepted, on this pleading application it is not appropriate for the Court to order TML to make admissions in the face of pleaded denials. The requirement to plead to an allegation is a requirement to admit or deny it and, if denying it, to do so without being evasive.7 As a matter of close case management, the Court encourages parties to narrow the issues in dispute on the pleadings, including by admitting incontrovertible facts. That will avoid unnecessary evidence and save trial time. But the remedy for failure to do so is not ordering an admission. If Getley maintains that TML should admit an allegation (for example, that it has not used the marks in respect of goods), Getley can serve a notice to admit. There may well be cost consequences if TML refuses to admit incontrovertible facts.
[31] It is also common ground that ‘the relevant period’ for non-use is a continuous period of three years between the date of registration and the date one month before the application for revocation.8 Here, the latter date is one month before the counterclaim dated 26 May 2023.
[32] Mr Glover indicated that reference to “during” the relevant period in TML’s table of details of use means “throughout”, except in relation to class 16. TML needs to be clear, in relation to each of the relevant goods and services, whether it denies non-use at all (that is, asserting it has used the marks throughout the period since registration) or only denies non-use for a continuous period of three years. TML’s reference to “during the relevant period” in its table of details of use is potentially ambiguous, especially when (in relation to class 16) TML adds “including” and refers to particular documents (some of which Mr Gray said merely indicate branded
7 High Court Rules 2016, r 5.48.
8 Trade Marks Act 2002, s 66(1A).
letterhead rather than use of “printed matter and publications”).9 Mr Glover indicated that TML denies any non-use at all (that is, it asserts continuous use throughout the period since registration). That should be made explicit in the pleading. If it is, TML need not go further and particularise every instance of use throughout the years since registration, as Mr Glover submitted. However, if the denial of non-use in relation to any goods or services (including those deleted in August 2023) is limited to non-use for a continuous period of three years (that is, it accepts there were periods of non-use but says they were less than three years), TML need to particularise the time period(s) in more detail.
Admission that Getley is an aggrieved person
[33] The application also seeks a pleading that records TML’s admission that Getley is an “aggrieved person” in terms of section 65 of the Trade Marks Act 2002. Again, on this pleading application it is not appropriate for the Court to order TML to make admissions in the face of pleaded denials. As indicated, other avenues are open to Getley.
Fair specification
[34] Getley also seeks a more explicit pleading of a “fair specification” for each of the two trade marks. This refers to the concept applying on a revocation application where the Court can order partial revocation if the revocation is sought, or the grounds are made out, only in relation to some of the goods or services for which the mark is registered. This may involve a granular examination of a specification considering how business activities and actual use correspond with the specification.10
[35] The terms of the order sought acknowledge the overlap between fair specification and particulars of use, which I have already addressed. I acknowledge that the concept of fair specification informs the need for particulars in relation to use, but I do not consider the responses to paragraphs 115 and 122 of the counterclaim require a fair specification to be separately pleaded. TML has responded to Getley’s
9 The documents referred to in the table were not in evidence on the application.
10 Clive Elliott and others Intellectual Property Law (online ed, LexisNexis) at [TMA68.3]-[TMA68.4].
separately pleaded fair specification in paragraphs 116 and 123. The adequacy of those responses is not pursued in this application.
Result
[36] TML’s further amended reply and defence to counterclaim is to incorporate the details of use relied on by TML (schedule 2), amended as needed to reflect the requirements identified above at [27], [29] and [32]. Getley’s application is otherwise dismissed.
Costs
[37] Given the result, my preliminary view is that costs should lie where they fall. I urge the parties to take a reasonable and proportionate approach to costs. If costs cannot be agreed, memoranda (not exceeding three pages) may be filed within 20 working days and I will determine costs on the papers.
Gault J
SCHEDULE 1
| nara | |||
| i i r. | A i i^ oa i i his s ra am<ni ml <m are wun aua im, i^ lash defe rcfant has a real e substantial inteest in deletion of the goaa arch •en ices for which I k4 J054843 ha not boon uaod from tho rogisBation, and is an aggrioed peson undor soct ion 65 (4} of tho Trado Marks Act 2002: The pTaint iff M$ tkeaterad to so the fourth defe rclant, arch has by this pnxeeding erred the defe renal, Ie inkingement of I k\ 1054843 in mat ion to tho fourth dofo ndant’s uao of tho nama TPADE Trado Jobs NZ and tho J OBS logo sinco at Toast J'uTy 2024 ; Certain of the goods ar›d serves for which TM 1054643 i$ cuvenly zegistwed and for which that ma-k has not been u•ed by the plaintiff are potentia¥y tho samo aa or simila to tho soviets povidod by tho lash oefercfanti (c} Tho proso noo of TM 40 54643 on tho dado meks pole ntiA to inhib it the fount h defendant from pwsuing its rorm£g comrneK i£g activities. | I i ao mir› pamyap is JJ5(a) arch \b) but otherwise oenies paagraph 445. | Prof ide a fai- speoficatio n for the a-ade ma-k. |
| Februi -y 2008\ the plaintiff hss only u•ed I k4 1054843 for intenet aref rroble applicaion eautment advertising s viooa in cTaas 35. | i I oenios pamyapn flu | [r-tmioej pan was arm auerieo us Iraoe mak /uuiumtiH no. 782112 by refeence to the s plea in the specification {as at the dae of the Counterdaim), including: .2. Each s vico for w hich uao ia aas tod; .2.2 Tho tirno pofiod or peioda of such aas tod uso; 1 .2.3 The bade cM nriels fa, and identify ing cMmc@i$tics cr ink ie ia of, sueh asserted use. |
| nara | ||
| Ana mph, in mm s swiiH cb\a xa / i ^ I mo• w> • Aa 2002, between the aaual ate of registra ion of I k\ 782112 and the ate one rronth befee the dae of this statomont of dofonoo and countedaim, a oonti ua poriod of moro than ttwoo yoga has &apaod during which TM 762112 was not put to ggwira use by the mw fa any of the sa-Rica for which it is registeed othe than intenet and | I i a mm parasap n i z i. | [mm icy pan was arry azoo u w trao• mak s jimmiiH no. 782112 by refeer›ce to the •ervica in the specification {as at the dae of the Counterdaim), ir›clw ing: 1 .2.2 The tirre peñodp periods of such as serted u se; 1 .2.3 The bade cM nriels fa, and identify ing cMmc@i$tics cr ink ie ia of, sueh asserted use. |
| lash defe ndant has a real e substantial inteest in deletion of the service for whic h I k4 782112 hss not been used from tho ragiabation, and is an aggrioed p son undo section 65T1) of the Trade MarM Act 2002. | J22{a) and \ b) but otherw ise denies paagraph PZZ. | Prof ide a fai- speoficatio n for the a-ade ma-k. |
| The point iff M$ t 6eaterad to so the fourth defe rcla nt, and has by this proceeding steed the defe rcla &, Ie inkingement of I k\ 782JJ2 in rd at ion to tho fourth dofo ndant’s uao of tho namo TPADE Trado Jobs NZ and tho J OBS logo sinoo at Toast J'ug 202a ; Certain of the Serv k;e$ fa vert ich TM 76Z112 i$ owrentty registered and fa w hich tMt mwk M $ not b•mn used by the pt intiff we potentiAly t he $a rre a$ or simila- to the service provided by t he fo‹xth dofo ndant; (c} Tho proso noo of TM 7624 42 on t ho dado marks reginter fa a broad range of her in $ M$ potentiA to inhibit t he forth defendant from pwsuing its nanny cornrnerci& actiy die I |
SCHEDULE 2
| u+aot'ilmd a&wti#r , /w it' w ul W#n e ¥ g t'@w, rMuikn# t W#n e ¥ g, rental of saartBlng uspe; dBsecrihatlcn of adva-tlshg mateilali conputerlud | I regu M# a , I rage M# JWt' #•o I regu M# wW iv \ irWoir I raa Me Jcbs sibs£e) durhg the raleveit parbd |
| eq+oymœ t sœv cas ironp+oyst ar¥z reaurtmœ t ag y sœv cas, ]cö plæœiœt se‹-vIcesi e k›yniœt savlce æid Informatbni advœtlshg sœvlœs povaœi th‹ou@ œy meala hdudhg p Inted advœtlslngi ç‹ovIdIng on•Iiræ Æàræsa drœfioriea; TeXmatôn, ælvice md æTtœcy n r&atia6 al the afaeaaid; poviaia of al the afaeaaid ordne via the internet a offre | Me Jcös sibs£e) durhg the raIœ'æit parbd |
| suces in crefg iÆfvouœs no gross oi pœgæ; serial nevrok sœvices; poviàa ofal the aÆeaaid Une via the irrlerræt a att | I r@8 M8 app , I ræle Me Jœs md I r@8 M8 wœ aiIn \ i di g I ram Me JeÖs æbaite) Ær@ the r&evœt perôd |
| CM#3g | |
| AŒen‹sngsœvcee ‹ncudngcues1eded*enengœnmoes, | Me JeÖs æbaite) |
| Trie Me wœa ils \ i di g Træle kms Jcaa ses riz / | |
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