Ownership Jurisprudence Under the Trade Mark Act 2002 – Past and Future Directions

Abstract

It has become increasingly common under New Zealand trade mark law for traders to oppose a trade mark application, or seek to invalidate an existing trade mark registration, on the basis that the applicant or the registrant is not the “true owner” of that trade mark. Typically, traders rely on s 32(1) of the Trade Marks Act 2002 and argue that because the trade mark has already been used in New Zealand, the applicant or registrant cannot claim to be the owner. Yet, such claims are not straightforward doctrinally. Section 32(1) is not expressly identified as a ground for refusing a trade mark, and understanding how the section operates as a ground of refusal requires a relatively sophisticated knowledge of New Zealand trade mark case law. Moreover, such case law has left certain areas uncertain, including the fundamental issue of whether the first use of a trade mark by one person remains a perpetual block to another person obtaining ownership. This article critically examines New Zealand jurisprudence relating to s 32(1) and false claims to ownership. It reveals what areas of the law are settled and what areas remain undecided. In particular, the article considers the potential of a recent Court of Appeal decision to shape the future interpretation of this area of the law.