This case dealt with the interesting issue whether a third party owner of a cited mark has a right to appeal against a decision of the Commissioner of Trade Marks refusing (under s42(1)(a) Trade Marks Act 2002)  to revoke acceptance of an application for an identical or similar mark.

The appellant was the owner of a series of registered trade marks for THE GOOD GUYS in a number of classes, most pertinently, class 35 for retailing services in respect of electronics, electrical goods and whiteware.  Its registrations were dated 30 July 2002 and 14 June 2006.

The respondent operated in an area of door-to-door retail services via trucks.  It had traded under the name THE GOOD GUYS in New Zealand since 1993.  It had subsequently expanded its retail services from clothing and manchester to incorporate (inter alia) whiteware and home appliances.

On 16 June 2006 the respondent applied to register THE GOOD GUYS in class 35 for retailing services including electronic goods and whiteware.  The Commissioner initially objected to the application based on the appellant’s prior registrations.  The application was put in abeyance pending certain proceedings. 

In June 2010 the respondent sought to have its application accepted under s26(b) on the basis of honest concurrent use or other special circumstances. IPONZ indicated its willingness to accept the application if the specification of services was limited to retailing services ‘provided door-to-door or in relation to a Christmas Club’.

The appellant, which had been monitoring the application, wrote to the Commissioner asking that acceptance be withdrawn.  The Commissioner declined.  Following actual acceptance (consequent on the respondent’s acceptance of the limitation) the appellant again wrote to the Commissioner seeking revocation of the acceptance under s42(1)(a) on the basis that “the application was accepted because of an error or omission made by the Commissioner”.  The Commissioner, in a written determination on 28 September 2010, advised that the allegations made by the appellant as to the respondent’s evidence were of a serious nature but that the opposition process was the appropriate forum.  The Commissioner also stated that any question as to the integrity of the respondent’s evidence in support of honest concurrent use was not an error or omission on the part of the Commissioner.  He therefore stated he could not revoke acceptance under s42(1)(a).

The appellant then filed a notice of appeal against the Commissioner’s refusal to revoke acceptance under s42(1)(a).

The appellant contended that the Commissioner’s refusal to revoke acceptance was a “decision” susceptible to appeal and that, as owner of a similar or identical mark, the appellant was an “aggrieved person” with standing to appeal.  It further asserted that there was no previous equivalent of s42(1) relating to revocation of acceptance in earlier New Zealand trade mark legislation and that under the section it was now permissible (relying on Australian case law) for a third party (such as the appellant) to require the Commissioner to exercise that power. 

Both the respondent and the Commissioner (who appeared through counsel to present arguments as to process) contended that there was no jurisdiction to entertain the appeal because:

(a)  The Commissioner’s refusal to revoke acceptance was not a “decision”;

(b)  In the examination phase, the appellant was not a person aggrieved;

(c)  The appeal was an abuse of process because the appellant still intended to bring opposition proceedings if it lost the appeal; and

(d) There was an existing procedure for opposition.

The respondent raised a number of other objections to the appeal.

Gendall J dismissed the appeal and held as follows:

• Under s42 a third party may be able to bring to the Commissioner’s notice or attention, facts/matters/submissions as to why acceptance should be revoked by the Commissioner [42].

Was the determination of 28 September 2010 a “decision” or simply “a refusal to make a decision”?

• The Commissioner’s decision was a decision not to propose to revoke so as to invoke the required procedure under regulations 71 and 72. It was a deliberate decision, or refusal to do what the appellant wanted.  The real issue was whether, on a third party’s application where revocation is declined, that party had the right to appeal the decision to the Court, even though it may be aggrieved [45] and [46].

Was the appellant a party “aggrieved” by the decision within s170 of the Act so as to be entitled to appeal?

• Parties can only be aggrieved for the purpose of the Act if the decision is something on which the legislature envisaged they could appeal.  Here the decision was not a refusal to revoke but rather a refusal to institute a process (i.e a hearing to revoke under regulations 71 and 72) being a process in which the appellant agreed it could not participate.  The only decision of significance would be a final decision by the Commissioner (following a hearing under regulations 71 and 72) to revoke or not revoke acceptance [50].

• The scheme of the Act envisaged two distinct phases:

(a)  First, examination of an application and acceptance with the applicant and Commissioner only being involved. If the Commissioner accepts an application he may become satisfied in terms of s42 that the application should not have been accepted by reason of error or omission or that another application has priority.  But the process remains as between Commissioner and applicant [53].

(b)   Second, opposition where evidence, submissions and direct involvement opposing the registration of the mark occurs [53].

• The meaning of “aggrieved person” must be obtained from the Act and within the statutory framework of the Act and Regulations.  It did not include, for the purposes of appeals, persons who wished to contest a decision of the Commissioner refusing to “propose” to invoke the mechanism for revocation [54] and [56].  The “aggrieved person” references in the Act other than in s170, all applied to post registration situations [55].

Was there “error or omission”?

• There must be examination by the Commissioner of an application and he must be satisfied that it complies with the requirements of the Act before it can be accepted (s39).  There has to be a measured initial conclusion or determination that the application complies with the requirements of the Act [60].

• It is not any mistake or ignorance of fact that qualifies as an “error or omission”, but rather:

(a)  the mistake or ignorance of fact must negate basic principles of research and examination;

(b)  such that a proper examination has not occurred and the necessary information is not before the examiner.

But that was not the case here.  Where facts alleged are denied, it cannot be said that there is a complete absence of them – that requires later determination (for example in opposition proceedings).  In the exercise of the initial duty (under s39) in the context of the Act, it was not an error for the examiner to decline at the preliminary stage to look behind the applicant’s (respondent’s)  statutory declaration.  The Commissioner may do so but does not have to.  There may be many situations that do not lead to his ‘satisfaction’ that error or omission exists.  Simply because the appellant may point to potential instances of confusion, or areas of contested claims, did not mean that an examiner erred or omitted by not considering that aspect.  The time for resolving that conflict was at an inter-parties’ objection (opposition) hearing [67] [69].

Re STM Inc (2004) (63 IPR 249); Re Apples 4 Apples IPONZ T 24/2008, 18 August 2008 referred to;

• The examiner had an evidential basis upon which to accept the application and there was no failure of basic principles of research and examination.  Parliament did not intend that the acceptance process be inter-parties, which is the role of opposition proceedings.  Where “facts” are disputed at the acceptance – or request to revoke – stage, and the Commissioner is not “satisfied” in terms of s42(1)(a) that he/she accepted the application because of error or omission, a statutory scheme does not enable the third party to require the pre-registration hearing process to occur [70].