According to New Zealand Trademark Registrythe name Red Bull has been registered for all the pieces from “lacquers” to “sausage machines”. And after all energy drinks.
All of them have been registered by the manufacturer of the title energy drink, but this doesn’t necessarily mean that Red Bull will expand its operations with recent products.
One of the goals of trademark law is to guard names, words and logos so that when consumers see a product they know where it comes from.
However, in most trade mark registration systems world wide – including New Zealand and Australia – you’ll be able to acquire ownership of a trade mark by simply submitting an application for the nominated goods or services (called a “specification”).
To apply, you do not have to truly use the trademark in your services or products – you only must be the primary person to register it. As a result, some corporations may register their trademarks for a wide selection of services or products to be able to claim broad ownership rights. This prevents other corporations from exploiting their brand.
Such “registration-based” systems might be in comparison with “usage-based” systems. The best example of the latter is the United States, where a mark shall be registered only when the applicant proves that he has used it in relation to the products or services covered by the specification.
The predominant advantage of a “registration-based” system is that you’ll be able to make sure that your trademark shall be protected before you undergo the effort and expense of selling your services or products.
Once you bring your product to market, you’ll be able to hope that consumers will actually recognize your services or products due to its trademark.
The drawback of such a system, nevertheless, is that brand owners can potentially register trademarks for goods or services for which they’ll never use their marks and for which they haven’t any real business interest.
A recent UK court ruling sheds light on such trademark filing practices in registration-based trademark systems and how a greater understanding of “bad faith” can curb such practices.
Sky Ltd v SkyKick
The bad faith trade mark prohibition is certainly one of the mechanisms used to forestall abuse of the ‘registration-based’ trade mark systems present in each New Zealand and Australian trade mark laws.
The UK Supreme Court recently considered how “bad faith” must be interpreted. Not only will this decision be a wake-up call to some UK trademark owners with broad and commercially unrealistic specifications (an outline of what an organization can trade), but it surely is prone to influence the law in New Zealand and Australia.
In 2016, British media corporations Sky Ltd and Sky International AG (Sky) began operations. trademark infringement proceedings against the IT company SkyKick for using the “SkyKick” mark in reference to the supply of varied cloud-based products.
SkyKick responded by claiming that Sky did it filed its trademarks in bad faith and they must be canceled. SkyKick’s arguments focused on the broad scope of Sky’s specifications, its use of overly broad categories resembling “computer software”, and its enforcement strategy.
For example, the specification for certainly one of Sky’s marks was over 8,000 words long and covered goods resembling “bleaching preparations” and “douches”.
The High Court found that Sky’s intention was to amass the trademarks as a legal weapon to make use of against third parties. This meant that the trademark applications were partly filed in bad faith.
The High Court’s finding was ultimately overturned by the British Court of Appeal. However, the Supreme Court upheld the Supreme Court’s decision.
In November, the Supreme Court confirmed that filing an application to register a trademark for goods or services for a purpose apart from that provided for under trademark law may constitute an abuse of the trademark system – and due to this fact bad faith – and if the person concerned has no intention of using the mark trademark as a sign of origin.
In this case, Sky obtained registrations for a really wide selection of products and services without providing a reputable business justification and was prepared to implement those marks against other traders.
Protection against bad faith
True, New Zealand Trademarks Act 2002 has additional mechanisms to forestall abuse of the registration system in comparison with UK law.
The Act allows the Intellectual Property Office to query the justification for the specification and allows third parties to query the applicant’s actual intention to make use of the trademark.
That said, the SkyKick judgment has the potential to end in greater scrutiny of trademark filing practices across all registration-based systems. It appears that New Zealand courts are now open to interpreting bad faith in accordance with the needs of trademark law.
In a case before the High Court of New Zealand Planet Fitness Ltd v PFIP Internationalit was alleged that the corporate had applied for the “Planet Fitness” trademark to forestall the worldwide gym chain from expanding into New Zealand, fairly than using the mark itself.
The High Court found that the applying was made in bad faith since the applicant pursued objectives unrelated to the protection of a mark intended to speak origin in the marketplace.
This approach to determining whether a registration has been made in bad faith may mean that the times of registering trademarks for any good or service under the sun, for purposes apart from business use, are numbered.
