HEINZ WATTIE'S LTD V GOODMAN FIELDER CONSUMER FOODS PTY LTD HC AK CIV 2007-404-6946

HEINZ WATTIE'S LTD V GOODMAN FIELDER CONSUMER FOODS PTY LTD HC AK CIV 2007-404- 6946 10 December 2008IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY CIV 2007-404-6946UNDER the Trade Marks Act 2002 IN THE MATTER OF an appeal from the decision of the Assistant Commissioner of Trade Marks dated 15 October 2007 AND IN THE MATTER OF New Zealand trade mark registration 77320 BETWEEN HEINZ WATTIE'S LIMITED Appellant AND GOODMAN FIELDER CONSUMER FOODS PTY LIMITED Respondent Hearing: 10 December 2008 Appearances: K McLeod for the appellant M Gavin and K Mullarkey for the respondent Judgment: 10 December 2008(ORAL) JUDGMENT OF STEVENS JSolicitors/Counsel: AJ Park, PO Box 565, Shortland Street, Auckland 1140 Hudson Gavin Martin, PO Box 105900, Auckland 1143Introduction[1] This is an appeal from a decision of the Assistant Commissioner of Trade Marks (the Assistant Commissioner) dated 15 October 2007 in relation to an application for revocation of the appellant's New Zealand trade mark 77320 PRAISE logo in class 29 (the PRAISE trade mark registration). [2] The Assistant Commissioner revoked the PRAISE trade mark registration on the ground that the appellant had not used the PRAISE trade mark and declined to exercise a discretion to maintain the registration of the PRAISE trade mark. [3] This appeal raises an important question of interpretation of the provisions of s 66 of the Trade Marks Act 2002 (the Act). In particular, the Court will be required to interpret the provisions of s 66(1)(a) and (b). [4] For decision today is an application by the respondent to amend or expand the grounds relied upon for revocation to include as a basis for relief the situation contemplated in s 66(1)(b), namely, that "except as provided in subsection (3) the use of the trade mark has been suspended for an uninterrupted period of three years". [5] The appeal was first heard on 4 November 2008. As the arguments on behalf of the appellant were then being developed it became clear that there was an important issue dividing the parties concerning the way in which the respondent, as the applicant, had approached the original application for revocation. In the application for revocation filed on 24 April 2005, the basis for revocation was solely s 66(1)(a) of the Act. That was the statutory basis that, consistent with the facts then known to the respondent, appeared to afford the most appropriate remedy for relief. Referring to any other basis had no evidentiary foundation and would have been speculative. [6] The respondent's reliance on s 66(1)(a) of the Act related to an alleged continuous period of three years or more following the actual date of registration during which the trade mark was not put to genuine use in the course of trade in New Zealand. That situation appeared to the respondent to be the appropriate basis forrelief, even after all the evidence had been placed before the Assistant Commissioner and was the position which the respondent's counsel adopted at the hearing before the Assistant Commissioner.History of the application for revocation[7] The chronology of relevant events is not in dispute. Counsel for the parties have helpfully agreed on a chronology, which is set out in the attached schedule. [8] The respondent's application for revocation was heard by the Assistant Commissioner on 31 August 2007. The Assistant Commissioner found in her decision that the respondent had made out a case on the evidence for relief under s 66(1)(a) of the Act. [9] The issue as to whether s 66(1)(b) of the Act was available as a basis for relief in addition to s 66(1)(a) was the subject of discussion at the hearing before the Assistant Commissioner. The possibility of adding s 66(1)(b) of the Act as a further ground for granting revocation was addressed but was not formally advanced by counsel. It seems that counsel for the respondent at the time did not consider it appropriate to press for the addition of s 66(1)(b) as a basis for seeking revocation given the status of the available evidence. [10] The appellant filed the present appeal on 12 November 2007. This was followed on 18 December 2007 by an interlocutory application by the appellant to file further evidence of the appellant's resumed use of the PRAISE trade mark. Such evidence was in the form of an affirmation of Michael John Pretty dated 15 January 2008 setting out the appellant's claims to have resumed use of the PRAISE trade mark on 24 July 2006. [11] The filing of this further evidence by the appellant, while considered irrelevant by the respondent to the question of relief under s 66(1)(a) of the Act, was thought potentially to be relevant to the possibility of relief under s 66(1)(b) of the Act. Accordingly, the respondent filed a notice of application for leave to amend oradd to the statutory basis for revocation to include s 66(1)(b) of the Act on 25 January 2008. [12] The appellant opposed the application and submitted that the appeal should be adjourned while the respondent made an application to the Intellectual Property Office of New Zealand (IPONZ) for leave to amend the original application for revocation. At a later mentions hearing in the High Court, there was discussion regarding whether an application for an amendment might succeed and whether further evidence might be required for the appeal. [13] Thereafter, the respondent wrote to IPONZ requesting an amendment of the original application for revocation to include s 66(1)(b) of the Act. By letter dated 3 July 2008, IPONZ responded stating that the Assistant Commissioner was functus officio. The application to include s 66(1)(b) in the application for revocation was not considered further. [14] The matter came back before the High Court on 11 September 2008 regarding the admission of further evidence by the appellant. That evidence was admitted without argument on that occasion. The application for leave to amend the grounds of the original application for revocation was not considered. Apparently, the respondent did not seek to advance it, but it was not formally withdrawn. Rather, the application was not pressed by the respondent. I note that the appellant contends that it was impliedly withdrawn or abandoned.Argument at the first hearing[15] In the course of argument on behalf of the appellant at the hearing on 4 November 2008, Mr McLeod referred to s 66(1)(b) of the Act. He noted that s 66(1)(b) relates to a situation where the use of the relevant trade mark has been suspended for an uninterrupted period of three years. He also observed that the interpretation of s 66(1)(b) of the Act would in part be relevant to the way in which the Court interpreted the provisions of s 66(1)(a). It seems from the advice of counsel that this is the first time the High Court has been called upon to consider these provisions of the Act.[16] It soon became clear during argument that the fact that the pleading issue had not been resolved was significant. Importantly, during the course of his submissions, Mr McLeod suggested that if s 66(1)(b) been expressly referred to, the appellant may have had no answer to the granting of relief. Specifically, he accepted that the evidence of what occurred prior to the filing of the application for revocation regarding the PRAISE trade mark was a suspension and that the appellant could have serious difficulty resisting relief on the basis in s 66(1)(b). I indicated that it was inappropriate to draw any final conclusions on the point, particularly as the pleading issue remained unresolved. [17] But after this observation by Mr McLeod, Mr Gavin for the respondent confirmed that there was on file an application by the respondent for leave to amend. He then sought leave to advance that application. Mr McLeod sought time to respond and to consider the issues raised. I then set a timetable leading up to today's hearing.Application for leave[18] Mr Gavin referred the Court to the provisions of s 173 of the Act, which sets out the powers of the High Court on appeal. Section 173 of the Act provides as follows:173 Determination of appealsIn determining an appeal, the Court may do any of the following things: (a) confirm, modify, or reverse the Commissioner's decision or any part of it: (b) exercise any of the powers that could have been exercised by the Commissioner in relation to the matter to which the appeal relates: (c) in the case of an appeal against the registration of a trade mark, permit the trade mark proposed to be registered to be modified in any manner that does not substantially affect its identity. However, in any such case, the trade mark as so modified must be advertised in the prescribed manner before being registered.[19] Rule 718 of the High Court Rules provides that all appeals are to be by way of rehearing. The High Court must come to its own conclusions based on thematerial before the Assistant Commissioner and any further evidence which has been admitted for the purposes of the appeal. [20] Mr Gavin referred to a discussion in Foodstuffs (Auckland) Ltd v Commerce Commission [2004] 1 NZLR 145 (PC) where at [8] and [9] when discussing the addition of a new point on appeal their Lordships stated:[8] The commission did not oppose leave being granted to Progressive to raise the point, but Foodstuffs did. Mr Farmer QC, on its behalf, submitted that Progressive was now seeking to resile from a stance which it had adopted below, ostensibly to its advantage there. He pointed out, quite rightly, that if the point was now entertained the Board would not have the advantage of the views of the Court of Appeal on it. Mr Farmer nevertheless accepted that the point was solely one of statutory interpretation and Foodstuffs could not advance any material prejudice if leave was given to argue it. [9] Their Lordships gave leave to do so on the basis of this lack of material prejudice and also because they considered it important, albeit the issue is now essentially spent, to determine the case on the correct legal footing. Not only does that accord with justice between the parties, but it also seemed appropriate from the point of view of ascertaining the true intention of Parliament when the amending legislation was enacted.[21] Counsel were agreed that this application fell to be determined under r 11 of the High Court Rules (the Rules). It was accepted that r 187, which is limited to amendment of pleadings and can only be invoked before a proceeding is heard, has no application: see Elders Pastoral Ltd v Pemberton (1990) 2 PRNZ 188. An alternative basis for dealing with this application may be under the inherent jurisdiction of the Court: see NZ Magic Millions Ltd v Wrightson Bloodstock Ltd[1990] 1 NZLR 731 at 743. [22] Rule 11 of the Rules provides:11 Power to amend defects and errors(1) The Court may, either before, at, or after the trial of any proceeding, amend any defects and errors in the pleadings or procedure in the proceeding, whether or not there is anything in writing to amend, and whether or not the defect or error is that of the party (if any) applying to amend. (2) The Court may, at any stage of a proceeding, make, either of its own motion or on the application of any party to the proceedings, suchamendments to any pleading or the procedure in the proceeding as are necessary for determining the real controversy between the parties. (3) All amendments made under subclause (1) or subclause 2 shall be made with or without costs and on such terms as the Court thinks fit.[23] It is to be observed that r 11(2) was amended in 1994. Prior to the law change, r 11 had only one category of amendment, which was the amendment of the defects and errors that were necessary for the purpose of resolving the real controversy between the parties. The amendments provided specifically that an amendment to any pleading or the procedure in the proceeding could be made at any stage of a proceeding either "of its own notion or on the application of any party to the proceeding". As the Foodstuffs (Auckland) Ltd appeal demonstrates, the rule has been used to allow amendments in the case of an appeal to introduce an argument as to statutory interpretation raised on appeal.Respondent's submissions[24] Mr Gavin submitted that the central focus of r 11 was to enable determination of the real controversy between the parties: see G L Baker Ltd v Medway Building and Supplies Ltd [1958] 1 WLR 1216 (CA). He also cited Elders Pastoral Ltd v Pemberton which, although decided prior to the 1994 amendment, indicated that it would be contrary to the spirit of the Rules if a party seeking to introduce a meritorious cause of action after the commencement of a trial would have no remedy. He submitted that the 1994 amendment gave greater force to this approach. [25] Mr Gavin also submitted that the real controversy between the parties on this appeal is whether the PRAISE trade mark, which as of the date of application for revocation was no longer being used, should remain on the register. He submitted that any issue of how the application for revocation was framed should not constrain the Court in reaching a decision based on the merits. The Court should not be prevented from determining the true facts and then deciding whether the trade mark had not been used for a continuous period of three years, or alternatively, whether it had been the subject of a suspension by the appellant.[26] Mr Gavin submitted that the amendment only related to the legal consequences flowing from facts which emerged both in the application for revocation and from the evidence before the Assistant Commissioner. The ultimate question was whether, based on the correct interpretation of s 66(1) and on the basis of the evidence as found by the Assistant Commissioner, an unused trade mark should be removed from the register. [27] Mr Gavin also relied on s 16 of the Judicature Act 1908, which provides the Court with the inherent jurisdiction to allow it to deal with matters that arise before it to ensure that the machinery of justice is able to proceed smoothly. He submitted that the Court could exercise its inherent jurisdiction in the circumstances of the present case which related to the statutory basis upon which relief should be given once all of the facts relevant to the application for revocation have emerged. [28] In conclusion, Mr Gavin submitted that the Court had the power to allow the amendment and that such an amendment was necessary to determine the real controversy between the parties.Appellant's submissions[29] Counsel for the appellant filed a detailed notice of opposition to the respondent's application to amend. It contended that the appellant was prejudiced by the respondent's application for leave and that such prejudice includes: a) The appellant has altered its position and recommenced use of the PRAISE trade mark on the basis of the respondent's original pleading; b) The respondent could have amended earlier and the delay caused by the respondent has prejudiced the appellant; and c) The respondent positively elected not to amend during the hearing before the Assistant Commissioner on 31 August 2007 and again positively elected not to pursue its original application to amend (dated 25 January 2008) in a joint memorandum dated 30 June 2008in advance of a case management conference on 1 July 2008. The appellant has relied on the respondent's elections. [30] In addition, it was contended that the proposed amendment sought to introduce a completely new ground of revocation, which had arisen since the filing of the original application for revocation. It was submitted that, even if leave were given, the amendment should take the date of the amended application for leave, which in this case was 25 January 2007. [31] The appellant further contended that if the respondent were allowed to amend and the date of filing the amendment was to be the original filing of the date of application for revocation, the appellant would be deprived of the protection afforded to it by s 66(3) of the Act. Counsel emphasised that the appellant's resumed use provided an absolute defence to the amended claim if the date of the amendment is any date after 24 July 2006. Counsel also contended that any new ground of revocation was statute-barred as a result of the appellant's resumed use of its PRAISE trade mark by the operation of s 66(3) of the Act. Finally, it was contended that it was not in the interests of justice that the respondent be permitted to amend its application for revocation. [32] In essence, Mr McLeod's argument relied on the specific reference in the application for revocation to s 66(1)(a) of the Act as being the apparent sole statutory basis upon which relief was sought. Because s 66(1)(b) of the Act had not been referred to in the application, Mr McLeod submitted that his client could, without disclosing the evidence relating to suspension, simply commence using the PRAISE trade mark and thereby invoke the protective provision of s 66(3). Mr McLeod submitted that the appellant was entitled to take advantage of the fact that the respondent had not specifically mentioned s 66(1)(b) to seek to advance its commercial position.Applicable statutory provisions[33] The relevant statutory provisions s 66 are as follows:66 Grounds for revoking registration of trade mark(1) The registration of a trade mark may be revoked on any of the following grounds: (a) that, up to the date 1 month before the date of the application for the revocation of the registration of the trade mark, a continuous period of 3 years or more elapsed following the actual date of registration during which the trade mark was not put to genuine use in the course of trade in New Zealand, by any owner for the time being, in relation to the goods or services in respect of which it is registered: (b) except as provided in subsection (3), that the use of the trade mark has been suspended for an uninterrupted period of 3 years: (c) that, in consequence of acts or inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered: (d) that— (i) the article or substance was formerly manufactured under a patent or the service was formerly a patented process; and (ii) a period of 2 years or more has elapsed since the expiry of the patent; and (iii) the word is or the words are the only practicable name or description of the article, substance, or service: (e) that, in consequence of the trade mark's use by the owner or with the owner's consent in relation to the goods or services in respect of which the trade mark is registered, the trade mark is likely to deceive or confuse the public, for instance as to the nature, quality, or geographical origin of those goods or services. (2) However, despite subsection (1), a trade mark may not be revoked for its non-use if its non-use is due to special circumstances that are outside the control of the owner of the trade mark. (3) The registration of a trade mark must not be revoked on the grounds in subsection (1)(a) or (b) if that use is commenced or resumed after the expiry of the 3-year period and before the application for revocation is made. (4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 3-year period but within the period of 1 month before the making of the application for revocation must be disregarded unless preparation for the commencement or resumption began before the owner became aware that the application may be made.[34] Also relevant to this application are the provisions of the Trade Marks Regulations 2003. Part 10 deals with revocation. Regulation 94 deals with an application to the Commissioner for revocation and provides as follows:94 Application to Commissioner for revocation(1) An application to the Commissioner for revocation of the registration of a trade mark must— (a) be in writing; and (b) contain the information specified in regulation 95; and (c) be signed by the applicant. (2) The Commissioner must, as soon as practicable, send a copy of the application to the owner of the trade mark.[35] The information required for an application for revocation is set out in reg 95 as follows:95 Information required for application for revocationAn application for revocation must contain the following information: (a) the applicant's name and address for service: (b) if the applicant has an agent, the agent's name: (c) a description or representation of the trade mark to which the application relates: (d) the number of the registration of the trade mark to which the application for revocation relates: (e) the class or classes or goods or services to which the application relates: (f) the grounds for revocation: (g) a statement of the basis on which the applicant claims to be a person aggrieved for the purposes of section 65(1) of the Act.Discussion[36] The starting point for any discussion on the contents of an application for revocation is reg 95. It is to be observed that an application for revocation mustcontain inter alia (f) "the grounds for revocation". Regulation 95(f) does not in terms state whether the grounds there referred to are the factual grounds or the statutory bases for revocation arising under the Act. Considering reg 95 together with s 66(1) of the Act and the heading to the section, which simply refers to "grounds for revoking registration of trade mark", does not conclusively resolve the point. [37] Mr Gavin submitted that all an applicant for revocation needed to do was to set out the then known factual basis for the application for revocation and refer generally to s 66(1) of the Act. That would be sufficient compliance with reg 95(f). [38] Mr McLeod on the other hand submitted that grounds required both the factual basis and the precise statutory basis for seeking revocation. Reference to one or the other would not satisfy the requirement of reg 95(f). [39] It seems clear that at the time of applying for revocation an applicant is unlikely to know all or perhaps any of the facts relevant to whether use of the trade mark has been "suspended for an uninterrupted period of three years". All an applicant would know was what facts and material had emerged from any investigation relating to non-use in the course of trade and in the marketplace in relation to the goods or services involved. Any knowledge relating to what occurred within the business of the owner of the trade mark, or what was in the mind of the owner of the trade mark when steps which may or may not amount to suspension were taken, would be unknown. Indeed, such facts could only be known after the respondent to any application for revocation had placed its evidence before the Assistant Commissioner. [40] Given the lack of clarity as to precisely what is required by reg 95(f), I consider that all that is required is for the applicant, in this case the respondent, to place the relevant factual material then known before the Commissioner. Thereafter, the facts will emerge through the interlocutory and hearing phases. The appropriate statutory bases for revocation, if available, would only finally be known once all of the evidence was in and once it had been subject to testing at the hearing before the Assistant Commissioner. I am satisfied that any failure to particularice the precisestatutory basis for seeking revocation would not mean that the application for revocation was invalid or ineffective. Further, it would still qualify as "the application for revocation" which was the trigger point for the restriction in s 66(3) of the Act. There is no good reason why it should not be open for an applicant who advanced only one ground in the application to include a further ground at a later point in the proceeding if evidence emerged to support it. The date of "the application for revocation" as a basis for reliance on s 66(3) would still be the date of the original application. [41] Here, that point was reached after the application for leave to adduce further evidence, namely, in December 2007. Thereafter, the respondent in January 2008 made the application for leave to add the further ground. Even if an applicant were required to specify both the factual basis and the statutory ground(s) relied upon, nevertheless this ought not to preclude the possibility of later amendment by addition (once new factual material emerged) to the original application for revocation. [42] I am satisfied that there is power in r 11 to allow the amendment. In the circumstances of this case, the amendment is simply allowed in order to permit a respondent to raise as a further basis for seeking revocation the basis identified in s 66(1)(b) of the Act. Relevant to the issue of possible prejudice, such an amendment is quite different to adding a fresh cause of action. The Court of Appeal has considered what is involved in terms of adding or introducing a fresh cause of action in Chilcott v Goss [1995] 1 NZLR 263 (CA). At 273 the Court of Appeal stated:In essence, "cause of action" means the act on the part of the defendant which gives the plaintiff the cause of complaint (Smith v Wilkins and Davies Construction Co Ltd [1958] NZLR 958, 961). The test of whether an amended pleading raises a "fresh" cause of action for the purposes of the rules as to amendment is well settled. In Smith v Wilkins and Davies Construction Co Ltd at p 961 McCarthy J put the matter in this way: "The issue is, I think, put as clearly as anywhere in the words of Lord Wright MR in Marshall v London Passenger Transport Board[1936] 3 All ER 83, as being whether the new pleading involves 'a new departure, a new head of claim, or a new cause of action' (ibid, 87). In other words, is it something essentially different from that which was pleaded earlier? Such a change in character may be brought about, in my view, by alterations in matters in law or of fact, or both. Alterations of fact could possibly be so vital and importantas by themselves to set up a new head of claim. On the other hand, more often alterations of fact do not affect the essence of the case brought against the defendant . . . In each case it must, I consider, be a question of degree."That test was adopted by this Court in Gabites v Australasian T & G Mutual Life Assurance Society Ltd [1968] NZLR 1145, 1151 where North P also cited with approval the following passage from the judgment of Sholl J inHarris v Raggatt [1965] VR 779, 785: "If we say that the law is that the plaintiff cannot be allowed, after the period of limitations has run, to set up a new cause of action, we use the term in a special sense as meaning a 'new case' varying so substantially from what has previously been set up that it would involve investigation of matters of fact or questions of law, or both, different from what have already been raised and of which no fair warning has been given, so that it would be unfair and unjust to the defendant to put him in peril of a judgment founded on the new matter. Certainly, if there is set up a 'new case' on the facts, upon which is based a new claim upon a new and different legal basis — a new cause of action in that sense — leave will ordinarily be refused." It is then a matter of comparing the allegations in the new pleadings with what has previously been alleged, recognising that questions of degree are involved. [emphasis added][43] The Court of Appeal also considered the question of introduction of a fresh cause of action in Attorney-General v Carter [2003] 2 NZLR 160 (CA). There, the test in Chilcott was addressed in the following way:[48] The question of what amounts to a new or fresh cause of action so as to be caught by R 187(3) was discussed by this Court in Chilcott v Goss [1995] 1 NZLR 263 at p 273 per Richardson J. The circumstance that the underlying facts may be the same or similar does not save a cause of action from being fresh if the plaintiff seeks to derive a materially different legal consequence from those facts. Obviously matters of degree can be involved but here the position is plain. The plaintiffs' breach of statutory duty causes of action have hitherto asserted negligence as an ingredient. Now they wish to assert liability without negligence. From the point of view of the appellants, as intended defendants, that change must amount to "a new departure" as Lord Wright put it in the leading English case of Marshall v London Passenger Transport Board [1936] 3 All ER 83 at p 87. The proposed change is also a change in character by means of an alteration in a matter of law, to adopt other words which Lord Wright used. [49] Further citation of authority in which different expressions, to the same general effect, have been used could only lead to the same conclusion. What the plaintiffs now wish to assert is materially different in law from what they have hitherto asserted, and represents a fresh cause of actionwithin the meaning of R 187(3). The proposed amendments cannot be made because they are statute-barred. The consequence is that the existing causes of action should all be struck out as untenable. The appellants, as defendants, are entitled to orders to that effect and also to summary judgment overall. [emphasis added][44] While these two decisions disclose different approaches to determining what amounts to a fresh cause of action, the approach in Chilcott focuses on the essence of the claim as opposed to the legal characterisation of the claim in Carter. The statements in Chilcott consider the substance rather than the form as pleaded. As the Court of Appeal in Chilcott observed at 273:the gist of the cause remains. It is not essentially different. We cannot see any prejudice to the defendants in a refocusing of what is at heart and has been throughout a claim that money advanced has not been repaid.[45] In terms of how an application to amend or add a statutory basis for revocation might be approached, I also refer to the case of Elders Pastoral Ltd v Marr (1987) 2 PRNZ 383 (CA):In our opinion, if an applicant can surmount the three formidable hurdles of showing that the amendment is in the interests of justice and will not significantly prejudice defendants or cause significant delay, very little if any weight should be given to the suggested desirability of something akin to the denunciation which is an established factor in criminal sentencing. We find it difficult to envisage a case in which the relevant considerations are not all comprehended in the three just mentioned.[46] I consider it is in the interests of justice that the amendment sought be allowed. The fact that the application to amend was made after the hearing of the application and during the appeal process is not determinative. What is important is that when the High Court comes to address the appeal by way of rehearing it is in a position to deal with the real controversy between the parties. [47] Another aspect of the interests of justice that applies in this case is the importance of ensuring that the trade mark register is kept "clean". There is a public interest in ensuring that trade marks which are not used or have been suspended for the required period are not allowed to remain on the register. This public interest in favour of "cleaning" the record and potentially enhancing competition in themarketplace is no doubt the policy rationale underlying the statutory provision allowing applications for revocation. [48] The issue of the public interest was addressed in the case of La Chemise Lacoste v Crocodile Garments Ltd HC WN AP32/02 18 November 2002, Ronald Young J. There, His Honour stated at [22]:Clearly the public do have an interest in ensuring that the Trade Marks register is clean and only registers those trade marks which are being actually used. If a trade mark is not in use for a significant period, then others should have the opportunity if they wish to use the trade mark in their business. Thus the public has an interest in a commercial sense in ensuring a fair opportunity for those who wish to register a trade mark and a fair opportunity to use the mark to promote their business.[49] So far as the question of delay is concerned, the cases require the Court to examine whether the party seeking the amendment has acted with considerable tardiness or in bad faith: see Wright Stephenson & Co Ltd v Copland [1964] NZLR 673 and Amos Gas Mixers Ltd v Baldwin, Son & Carey (1991) 5 PRNZ 233. [50] I am satisfied that there is no delay of either type on the part of the respondent such as would disqualify the respondent from pressing the amendment. [51] The appeal has yet to be finally heard and determined. One consequence of allowing the application is that all aspects of the interpretation of s 66(1) of the Act will be able to be thoroughly addressed at the hearing. Further, all relevant factual questions pertaining to both potential relief under s 66(1)(a) or (b) will be able to be considered by the High Court. This could be significant if the case should proceed to further appeal. [52] Mr McLeod also emphasised the importance of "pleadings" and sought to rely on the decision of Hammond J in VB Distributors Ltd v Matsushita Electric Industrial Co Ltd (1999) 9 TCLR 338 for the proposition that parties in an application for revocation of a trade mark registration should not be permitted to amend their original pleadings. In that case, the applicant had admitted in its counter-statement the respondent's plea that it had a reputation for the trade mark in New Zealand. In reliance on the applicant's admission no evidence was led aboutthe respondent's reputation. The applicant later sought to argue that while the respondent did have a reputation for the trade mark, it was not a sufficient one. Hammond J considered that this argument was more in the nature of an affirmative defence and should have been made apparent from the outset: at [43]. [53] However, the amendment effectively sought in that case was very different to the amendment sought to be made here. It would have brought about a material change to the nature of that case by effectively introducing an affirmative defence. Moreover, it was sought late in the proceeding without explanation for the delay and change of position. The amendment sought in this case, however, seeks simply to plead a possibly co-extensive ground of relief and does not bring about a material change to the nature of the case. The late change is also explained on the basis that the facts were not known to the respondent at the time of its application. [54] In any event, I note that VB Distributors was decided prior to the enactment of the Trade Marks Act in 2002 whose provisions are now of course determinative. Any assistance to be derived from this decision must now be limited. [55] The final question is that of prejudice to the appellant as respondent to the application. Mr McLeod has argued strongly on behalf of the appellant that to allow the respondent to raise s 66(1)(b) of the Act as a possible basis for revocation as of the date of its application for revocation would be to defeat any rights of resumed use available to the appellant from having resumed the use of the PRAISE trade mark on 24 July 2006. The gravamen of Mr McLeod's argument on this point was summarised at [32] above. [56] But another way of viewing the actions of the appellant might be that it deliberately and cynically delayed filing any evidence relating to how the PRAISE trade mark was dealt with internally within the company in order to defeat a legitimate application for revocation. In other words, the appellant was seeking to take advantage of the fact that the respondent had not expressly invoked s 66(1)(b) at a time when the respondent could not have had any evidence of facts supporting the availability of that basis for relief because such facts were solely within the knowledge and control of the appellant.[57] I am not satisfied that this is a real ground of prejudice. First, the appellant will be able to argue both the interpretation and any factual matters pertaining to both s 66(1)(a) and (b). Secondly, I am satisfied that a critical point in the revocation process is the date upon which the application for revocation was made. Section 66(3) and (4) deal with the relevance and applicability of resumed use. In particular, s 66(3) provides that the registration of a trade mark must not be revoked on the grounds in subsection (1)(a) or (b) if that use is commenced or resumed after the expiry of the three year period and before the application for revocation is made. Clearly the focus is upon the facts prior to the application for revocation. In this case it seems that as at 20 April 2005 (the date of application for revocation), the appellant had not put the PRAISE trade mark to genuine use for a continuous period of three years or more following the actual date of registration. The Assistant Commissioner found this to be the case and ordered that the PRAISE trade mark be removed from the register. Adding to the available grounds for relief once evidence emerges to support that ground does not in my view prejudice the appellant. [58] Standing back and considering the overall justice of the matter and applying the principles of the interest of justice, considering the question of delay and any question of prejudice, I am satisfied that it should be open to the respondent to argue on the resumed appeal that, depending on the facts as found by the High Court, revocation on the basis of s 66(1)(b) is available as a possible basis for relief.Result[59] The application to refer to s 66(1)(b) of the Act as a basis for relief is therefore granted.Costs[60] The question of costs of this application are reserved. I note that the hearing on the application for amendment by the respondent has required one half day. _________________________ Stevens JHEINZ WATTIE'S LTD V GOODMAN FIELDER CONSUMER FOODS PTY LTD HC AK CIV 2007-404-6946 10 December 2008Schedule Chronology 9.5.1966PRAISEtrade markregisteredandthereafterused for aperiod.31.8.2007Hearingbefore theAssistantCommissioner24.7.2006Appellantresumesuse ofPRAISEtrade mark.25.1.2008Applicationfor leave toamendfiled withthe HighCourt.Mar 2000Manufactureof PRAISEmayonnaiseby theappellantceases.12.11.2007Appealfiled.24.4.2005Applicationforrevocationfiled.11.11.2008Amendedapplicationfor leave toamendfiled.