Facts

MIL was a New Zealand-based manufacturer, importer, and wholesale merchant dealing in a wide range of food and beverage products including canned fish. MIL’s application for the trade mark OCEAN QUEEN in class 8 for canned fish was registered on 21 July 2005. FI filed its application for revocation on 26 August 2009. The relevant period for non-use was 26 July 2006 to 26 July 2009.

Relevantly, MIL’s evidence stated that:

(a)  In February 2008, MIL placed an order for OCEAN QUEEN branded canned mackerel from a Peruvian company;

(b)  On 28 May 2008, the Peruvian company advised MIL that no mackerel had been caught because of climate conditions;

(c)  On 3 October 2008, MIL made an inquiry of a Thai company as to whether that company could supply MIL with OCEAN QUEEN branded fish;

(d)  On 29 January 2009, the Peruvian company advised MIL that they had located a manufacturer to supply canned fish under the OCEAN QUEEN label. However further investigations revealed that the fish product was not up to standard. At the same time, MIL was advised by the Thai company that OCEAN QUEEN was “a registered brand” in Thailand which was causing difficulties in the supply of OCEAN QUEEN products for MIL from Thailand;

(e)  In August 2009, further communications were exchanged between MIL in which the Peruvian company offered to supply product under a different label, supposedly because the OCEAN QUEEN brand was registered to FI in New Zealand. (However, in fact, FI had only applied for the OCEAN QUEEN trade mark on 26 July 2009).  This communication occurred after the expiry of the relevant period.

Decision of the Assistant Commissioner

The Assistant Commissioner considered that MIL’s stated reasons for not using the OCEAN QUEEN trade mark did not constitute “special circumstances” because sourcing fish was part of the normal course of trade undertaken by MIL. Determining the timing and sourcing of fish products was something within its control. There was no connection between the unavailability of fish product and the use of the trade mark OCEAN QUEEN.

Held dismissing the appeal and upholding the decision of the Assistant Commissioner revoking registration of the appellant’s trade mark:

(1)  The policy underpinning ss 65 and 66 of the Act was that unused trade marks should not be permitted to clog up the Register of Trade Marks. [22]

Special circumstances

(2)  The evolution of the statutory test for maintaining registration of an unused trade mark means that not all of the jurisprudence which had developed in the area continues to be relevant. However the following key points continue to be pertinent:

(a)  For circumstances to be special they must be “peculiar or abnormal” and arise through “external forces as distinct from the voluntary acts of” the registered owner of the trade mark in question;

(b)  It is not necessary to show that the “special circumstances” made use of the trade mark impossible. It is enough to show that those circumstances made it impracticable in a business sense to use the trade mark;

(c)  There must be a causal link between any special circumstances and the non-use of the trade mark. [28]

(3)  The authorities make it clear that the threshold a registered owner of an unused trade mark must meet is particularly high. The phrase “special circumstances” in a statute invariably involves the need to establish rare and highly unusual factors that are beyond the control of the person who seeks to rely on those special circumstances. The inquiry in this context is very fact specific. [30]

Had MIL established special circumstances for not using the OCEAN QUEEN trade mark?

(4)  The Assistant Commissioner was correct in concluding that MIL had not established special circumstances for failing to use the OCEAN QUEEN trade mark during the relevant period. [31]

(5)  The following matters clearly demonstrated that MIL’s failure to use the OCEAN QUEEN trade mark was not attributable to special circumstances [33]:

(a)  MIL’s attempts to source fish stock from South America during the three year relevant period spanned just four months;

(b)  Bearing in mind that the onus of establishing special circumstances rests with MIL the Court found it surprising that MIL:

(i)  appeared to have relied on just one small supplier in Peru to access fish stock from South America; and

(ii)  did not pursue its inquiries over a greater period of time;

(c)  Such concerns were reinforced by the fact that FI and another company appeared to have no difficulty in acquiring significant quantities of fish stock from South America during the same period. Further evidence showed that canned mackerel was available through mainstream outlets in New Zealand during the period;

(d)  MIL’s efforts to access fish stock from Thailand were very casual;

(e)  MIL’s complaint that the Peruvian supplier had been told that FI was the registered owner of the OCEAN QUEEN trade mark in New Zealand did not advance MIL’s case since it occurred after the expiration of the relevant period.

Discretion

(6)  MIL’s request that the Court exercise its discretion to refuse registration even if special circumstances were not established was refused. Three factors weighed heavily against that plea:

(a)  The Register of Trade Marks was unnecessarily clogged by MIL’s failure to use the mark;

(b)  There was an absence of any evidence of use of the mark by MIL; and

(c)  MIL’s continued ownership of the mark was blocking FI’s legitimate desire to use the trade mark to capitalise on its reputation in OCEAN QUEEN acquired through use of that mark in the Pacific for over 15 years. [36]