INTERNATIONAL CONSOLIDATED BUSINESS PTY LTD v S C JOHNSON & SON INC [2019] NZCA 61

INTERNATIONAL CONSOLIDATED BUSINESS PTY LTD v S C JOHNSON & SON INC [2019] NZCA 61[19 March 2019]IN THE COURT OF APPEAL OF NEW ZEALANDI TE KŌTI PĪRA O AOTEAROACA72/2018[2019] NZCA 61BETWEEN INTERNATIONAL CONSOLIDATEDBUSINESS PTY LTDAppellantAND S C JOHNSON & SON INCRespondentHearing: 23 August 2018Court: Kós P, French and Brown JJCounsel: G C Williams and L E Mannis for AppellantG F Arthur and L Carter for RespondentJudgment: 19 March 2019 at 4.00 pmJUDGMENT OF THE COURTA The appeal against the order quashing the Assistant Commissioner'sfinding that ICB is the owner of the ZIPLOC trade mark is dismissed.B The direction that the proceeding be referred back to the AssistantCommissioner for a new hearing of the issues at [159] of the High Courtjudgment is quashed.C Trade mark application 975954 for ZIPLOC is to proceed to registration.D The appellant must pay the respondent costs for a standard appeal on aband A basis and usual disbursements.____________________________________________________________________Table of ContentsPara NoIntroduction [1]Obtaining and removing registered trade marks [7]Applying for registration [8]Revocation of registration of trade mark [13]Relevant background [19]The Assistant Commissioner's decision [23]The High Court judgment [26]Issues on appeal [34]Did the High Court err in treating 19 April 2013 as the effectiverevocation date of RTM 648953? [36]Was the presence on the register of ICB's RTM 648953 on19 April 2013 a bar to Johnson's application for registration? [46]The position prior to 2002 [49]Section 68(2) [55]The legislative history [62]The implications of s 66(3) and (4) [69]The technique for backdating the effective date of removal [79]Conclusion [83]Does first use of a trade mark determine ownership in perpetuityor can an initial entitlement to ownership be lost throughcessation of use? [86]Was a reference back of the ownership question erroneous? [92]Result [96]Costs [99]REASONS OF THE COURT(Given by Brown J)Introduction[1] Both the appellant, International Consolidated Business Pty Ltd (ICB) and therespondent, S C Johnson & Son Inc (Johnson) aspire to be the registered owner inNew Zealand of the trade mark ZIPLOC in class 16.1[2] On 26 June 2014 ICB's previous registered trade mark (RTM) number 648953for ZIPLOC was removed from the trade mark register with effect from the date ofJohnson's application for removal of 22 April 2013. ICB filed a further applicationfor registration of ZIPLOC under application number 1005952 on 26 September 2014.1 Of the Nice Classification system (the tenth edition then applied).[3] On 19 April 2013, three days prior to its application for removal of ICB's RTM648953, Johnson filed its own application to register ZIPLOC under applicationnumber 975954. Being first in time Johnson's application had priority over ICB'sfurther application.[4] ICB's opposition to Johnson's application was upheld by the AssistantCommissioner of Trade Marks on two grounds:2(a) On the date of Johnson's application, 19 April 2013, ICB was the ownerof the ZIPLOC trade mark by virtue of its RTM 648953.Hence Johnson was precluded from filing an application forregistration prior to the effective date of the removal of RTM 648953on 22 April 2013.(b) Johnson failed to establish that there was no use by ICB of the ZIPLOCtrade mark either prior to any use by Johnson or prior to Johnson'sapplication for registration on 19 April 2013.[5] On appeal to the High Court Cull J ruled that the effective revocation date ofICB's RTM 648953 was 19 April 2013.3 The Judge quashed the AssistantCommissioner's finding that ICB was the owner of the ZIPLOC trade mark on thatdate ie, ground (a) above. She referred the proceeding back to the Commissioner fordetermination of the issue whether ICB or Johnson is the true owner of the trade markZIPLOC.4 ICB appeals from that judgment.[6] The primary issue on the appeal concerns the validity of Johnson's applicationfor registration on 19 April 2013. It raises significant issues as to the interpretation ofthe Trade Marks Act 2002 (the Act).2 S C Johnson & Son, Inc v International Consolidated Business Pty Ltd [2017] NZIPOTM 4[Assistant Commissioner decision] at [38]–[39] and [53].3 S C Johnson & Son Inc v International Consolidated Business Pty Ltd [2017] NZHC 3238[High Court judgment] at [150].4 Together with related questions as to use of and intention to use the trade mark.Obtaining and removing registered trade marks[7] Registration of a trade mark confers on the registered owner various exclusiverights including the use of the RTM.5 It is not a prerequisite of registration that theapplicant is using the trade mark, provided that at the date of application it has theintention to use it. However the underlying philosophy of the Act is that a registeredowner must use the trade mark or risk losing the registration.Applying for registration[8] Application is to be made in accordance with s 32(1) of the Act:32 Application: how made(1) A person claiming to be the owner of a trade mark or series of trademarks may, on payment of the prescribed fee (if any), apply in theprescribed manner (if any) for the registration of the trade mark orseries of trade marks used or proposed to be used in respect of thefollowing:(a) particular goods or services within 1 or more classes:(b) particular goods and services within 1 or more classes.[9] The definition of "owner" in s 5(1) distinguishes between ownership of a trademark and ownership of a registered trade mark:owner,—(a) in relation to a registered trade mark that is not a certification trademark or a collective trade mark, means the person in whose name thetrade mark is registered; and(d) in relation to an unregistered trade mark, means the person who ownsall of the rights in the mark[10] The Commissioner must accept an application that complies with therequirements of the Act.6 If different persons separately apply for registration of5 Trade Marks Act 2002, s 10(1).6 Subject to any conditions the Commissioner thinks fit: s 40.identical or similar trade marks in respect of identical or similar goods or services, thefirst application received by the Commissioner has priority and may proceed.7[11] Section 25(1)(a) provides that the Commissioner must not register a trade mark(trade mark A) in respect of any goods or services if it is identical to a trade mark(trade mark B) belonging to a different owner that is registered or has priority inrespect of either the same goods or services, or goods or services that are similar tothose goods and services and its use is likely to deceive or confuse.[12] The Commissioner must not register a trade mark until six months after thedate of application for registration.8 However on registration the trade mark is deemedto have been registered as at the date of application.9 The registered owner may bringproceedings for infringement of the registered trade mark if the infringement occurredon or after the deemed date of registration.10Revocation of registration of trade mark[13] Registered trade marks which were not registrable under Part 2 at the deemeddate of registration may be declared invalid under s 73. Validly registered trade marksmay be revoked on various grounds prescribed in s 66. One such ground is that at notime during a continuous period of three years or more was the trade mark put togenuine use in the course of trade in New Zealand, by the owner for the time being, inrelation to goods or services in respect of which it is registered.11[14] In Crocodile International Pte Ltd v Lacoste the Supreme Court drew attentionto the purpose of the non-use provision,12 often referred to as the "use it or lose it"provision, as explained by Jacob J in Laboratoire de la Mer Trade Marks:13There is an obvious strong public interest in unused trade marks not beingretained on the registers of national trade mark offices. They simply clog upthe register and constitute a pointless hazard or obstacle for later traders who7 Section 34(1).8 Section 50(2).9 See definition of "deemed date of registration" in s 5(1); see also ss 51(a) and 57.10 Section 100(b).11 Section 66(1)(a).12 Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 at [51].13 Laboratoire de la Mer Trade Marks [2002] FSR 51 (Ch) at [19(a)].are trying actually to trade with the same or similar marks. They areabandoned vessels in the shipping lanes of trade.[15] Section 66(1A) provides a definition of "continuous period":(1A) For the purposes of subsection (1)(a), continuous period means aperiod that commences from a date after the actual date of registrationand continues uninterrupted up to the date 1 month before theapplication for revocation.[16] Section 66 further provides:(3) The registration of a trade mark must not be revoked on the ground insubsection (1)(a)14 if that use is commenced or resumed after theexpiry of the 3-year period and before the application for revocationin 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 monthbefore the making of the application for revocation must bedisregarded unless preparation for the commencement or resumptionbegan before the owner became aware that the application may bemade.[17] In contrast to the other grounds of revocation in s 66, in respect of which theapplicant for removal bears the onus of proof, on an application for removal fornon-use under s 66(1)(a) the owner must provide proof of the use of the trade mark ifthe owner intends to oppose the application.15[18] Of particular significance for the issues on this appeal is s 68(2) whichbackdates the effective date of revocation in similar fashion to applications forregistration:68 Revocation of registration of trade mark(1) If grounds for revocation exist in respect of only some of the goods orservices in respect of which the trade mark is registered, revocationrelates only to those goods or services.(2) If the registration of a trade mark is revoked to any extent, the rightsof the owner, to that extent, cease on—(a) the date of the application for revocation of the registration ofthe trade mark; or14 See above n 11, and [13].15 Section 67(a).(b) if the Commissioner or the court is satisfied that the groundsfor revocation of the registration of the trade mark existed atan earlier date, that date.Relevant background[19] Over the past 45 years there have been a number of registrations of the ZIPLOCtrade mark in New Zealand. Consequent upon the acquisition of DowBrands in 1998,S C Johnson Home Storage Inc became the owner of RTM 109101 in class 16 forplastic film for wrapping purposes which was registered in 1974 and RTM 140148 inclass 16 for plastic bags which was registered in 1981. In 1999 it obtainedRTM 313887 in class 21 for plastic containers. On the application of ICB,RTM 109101 and RTM 140148 were removed from the register on the ground of non-use of the trade mark with effect from 7 December 2001. RTM 313887 was alsoremoved from the register on ICB's application on the ground of non-use as from5 September 2005.[20] On 8 June 2006 ICB obtained RTM 648953 for the ZIPLOC trade mark inclass 16, the registration being deemed to take effect from the date of application on22 November 2001.16 On 22 April 2013 Johnson filed an application for revocationof RTM 648953 and an order for removal of that registration on the ground of non-usewas made on 26 June 2014.17[21] On 26 September 2014 ICB filed a further application number 1005952 inclass 16. ICB's application was held in abeyance pending the processing of Johnson'sapplication number 975954 in class 16 which had priority having been filed earlier on19 April 2013.1816 The specification of goods was: bags in this class, including plastic bags; kitchen tidy bags andgarbage bags; plastic bags for food storage, snacks and sandwiches; plastic freezer bags and plasticbags for medical products; clingwrap.17 International Consolidated Business Pty Ltd v S C Johnson & Son, Inc [2014] NZIPOTM 27.18 The specification of goods was: plastic bags and plastic film for wrapping purposes.[22] Johnson's application was opposed by ICB on four grounds:(a) the application for registration was not made by a person who at therelevant date was the owner or proprietor of the mark;19(b) use of the mark by Johnson on its goods would have been likely todeceive or cause confusion;20(c) use of the mark by Johnson would be contrary to law because it would(i) amount to passing off at common law and/or (ii) be contrary tovarious provisions of the Fair Trading Act 1986. Use of the mark byJohnson would be disentitled to protection in any court;21(d) the mark was identical to a trade mark which at the relevant datebelonged to a different owner, namely ICB, registered in respect of thesame goods.22The Assistant Commissioner's decision[23] In her decision dated 17 January 2017 the Assistant Commissioner ofTrade Marks upheld ICB's first ground of opposition. While not therefore required todetermine the other three grounds, the Assistant Commissioner was inclined to theview that none should succeed. The Assistant Commissioner recognised that Johnsonhad the onus of proving ownership of the trade mark and considered that the relevantdate for determining Johnson's claim to ownership was the date of its application,19 April 2013.23[24] ICB argued that at the relevant date the ZIPLOC trade mark was registered inits name, the order for revocation for non-use having taken effect three days after therelevant date on 22 April 2013. It therefore contended that Johnson's application wasnot made in accordance with the Act because at the relevant date Johnson was not the19 Trade Marks Act, s 32(1).20 Section 17(1)(a).21 Section 17(1)(b).22 Section 25(1)(a).23 Assistant Commissioner decision, above n 2, at [15].owner of the ZIPLOC trade mark. The Assistant Commissioner accepted ICB'sargument, holding:38. In summary, the opponent's position is that, by virtue of its trade markregistration no. 648953 it was the owner of the ZIPLOC mark whenthe applicant filed its trade mark application for the same mark.The opponent emphasises that, as a result of ss 13 and 32(1) of theAct, and the case law that has developed under s 32(1), it is aprecondition of making an application that ownership can be provedby the applicant at the date of application.39. I tend to agree that the combined effect of the statutory provisions inss 32(1), 5(1), 13 and 68(2)(b) of the Act is to prohibit [Johnson's]application for the ZIPLOC mark proceeding to registration. (Footnotes omitted).[25] The Assistant Commissioner also upheld ICB's opposition on the alternativeground that use of the ZIPLOC trade mark by ICB in November 200924 pre-dated bothJohnson's application for registration and the date of Johnson's claimed use of thetrade mark. While upholding ICB's first ground of opposition and directing thatJohnson's application number 975954 must not be registered, theAssistant Commissioner proceeded to consider the other three grounds briefly.We draw attention to her conclusion on the fourth ground based on s 25(1)(a) becauseit assumed significance in the High Court's judgment on appeal:81. I consider that special circumstances exist in this case pursuant tos 26(b) of the Act, by virtue of the opponent's trade mark registrationbeing revoked only three days after the relevant date (with those threedays covering a weekend). As a result, the ground of opposition unders 25(1)(a) of the Act is unsuccessful.82. In my view this result is not inconsistent with the finding for thes 32(1) ground based on the opponent's ownership claim.Section 25(1) of the Act is aimed at preventing likely deception orconfusion. As stated, in the present case there is no likelihood ofdeception or confusion in a practical sense because the parties'ZIPLOC marks were never in fact listed as being registered on theNew Zealand register at the same time. At most there are only threedays where notionally the two marks were registered at the same time.Counsel for the applicant describes that as a legal fiction resultingfrom the deemed date of registration.24 An affidavit of an ICB director, Mr Withers, exhibited an invoice dated 11 November 2009 fromHefty NZ Ltd, the New Zealand entity in the ICB Group, to Real Foods Ltd for 300 cartons of"Hefty Ziploc Resealable Sandwich Bags".83. In contrast, s 32(1) relates to proprietary rights as between entities.I consider the purpose behind the ownership provisions in the Act isto ensure the register accurately reflects the true owner of a mark.The monopoly granted by a registration should not be granted to thewrong party. The common law has a policy of protecting propertyrights, and it leans against abandonment.(Footnotes omitted).The High Court judgment[26] On Johnson's appeal Cull J identified the key issues to be:25(a) whether the Commissioner erred, in determining first that Johnsoncould not register the trade mark because it was not the owner of thetrade mark at the time of its application on Friday 19 April 2013, when[ICB], which was the owner on 19 April, had its trade mark revokedand removed the following Monday, 22 April 2013; and(b) whether the Commissioner was correct in finding that [ICB] had thebest evidence of prior use of the trade mark in New Zealand.[27] The Court heard argument from Johnson based on overseas authorities that therelevant date to determine ownership should be the date on which a decision to registerthe trade mark is made rather than the date of application. However the Judge did notconsider that this was an appropriate case to determine that issue and proceeded on thebasis as advocated by ICB that the relevant date to determine ownership was the dateof application for registration.26[28] The Judge viewed as artificial the Assistant Commissioner's finding that ICBwas the owner of the registered trade mark ZIPLOC when at a hearing two and a halfyears earlier on 26 June 2014 the same Assistant Commissioner had revoked ICB'sregistration, backdated to 22 April 2013, three days after Johnson's application forregistration.27 Addressing what she described as the three day anomaly, the Judge said:[67] In circumstances such as this case, where an application forregistration is made some few days before the opponent's trade mark isrevoked, the relevant date can produce anomalies that conflict with the Act'spurpose, unless relevant subsequent events affecting ownership, such asrevocation of an earlier mark, are taken into account.25 High Court judgment, above n 3, at [2].26 At [62].27 At [49].[68] The Act provides a mechanism for dealing with a "notional overlap"between application for registration and revocation of an earlier mark by wayof s 26(b), which enables the Commissioner to find a case of honest concurrentuse or special circumstances. This allows for the competitor's trade mark tobe registered, subject to any conditions that the Court or the Commissionermay impose.[29] The Judge considered that the Assistant Commissioner had appropriatelyaddressed and resolved the date anomaly by exercising her discretion under s 26(b)and finding special circumstances existed.28 The Judge considered that the specialcircumstances finding was an appropriate resolution of the date anomaly because theCommissioner could only register a trade mark if satisfied that the applicant was theowner.29[30] The Judge turned to address ICB's submission that Johnson's application forregistration did not meet the requirements of the Act because as at 19 April 2013Johnson was not the owner of the registered trade mark, nor did it own all the rightsin the unregistered mark.30 ICB submitted that as Johnson had failed to seek an earlierrevocation date under s 68(2)(b), the revocation of ICB's registration took effect onlyfrom 22 April 2013. ICB argued that as the revocation decision was not before theHigh Court on the appeal, it having already been decided by theAssistant Commissioner in June 2014, the Court could not backdate the date ofrevocation to 19 April 2013.[31] The Judge did not accept ICB's contention, stating:[123] Here the Commissioner also made a finding of special circumstancesunder s 26(b) but then found that her finding under s 32 trumped her s 26(b)finding, because s 32 relates to proprietary rights as between entities.Although the Commissioner acknowledged the purpose behind the ownershipprovisions in the Act is to ensure the register accurately reflects the true ownerof a mark, she subsumed the special circumstances finding and in so doing,overlooked that [ICB] was the registered owner from Friday 19 April 2013 toMonday [22] April 2013 only.[124] Despite the failure of Johnson to seek an earlier revocation date orappeal the revocation decision, it defies logic, common sense and the purposeof the Act to make a determination of ownership at 19 April 2013, four yearslater, in the knowledge that [ICB] lost its registration on 22 April 2013,because it was not using the trade mark.28 See [25] above.29 At [64].30 At [71]–[73]. See the definition of "owner" at [9] above.[125] I consider the Court cannot stand by and fail to ensure that the objectsof the Act are met. That is the responsibility of an appellate court on a generalappeal. The three day gap between 19 April 2013 and 22 April 2013 shouldnot be an impediment to a determination of the true owner of the trade mark.Consistent therefore with the Commissioner's special circumstances finding,the application and revocation date should be 19 April 2013.[32] Consequently, Cull J quashed the Assistant Commissioner's finding that ICBwas the owner of the ZIPLOC trade mark.31 On the issue of ICB's prior use of thetrade mark which was the basis for the Assistant Commissioner's second ground fordeclining registration, the Judge noted that Johnson had objected to the admission ofthe ICB evidence32 as hearsay and that the relevant witness had not beencross-examined.33[33] The Judge considered it was inappropriate for an appellate court to make adetermination in circumstances where she considered the evidence on prior use waslacking. Consequently, because of the evidential challenges and the absence of detailin the evidence, the Judge referred Johnson's application back to theAssistant Commissioner for a further hearing to determine the true owner of theZIPLOC trade mark.34Issues on appeal[34] ICB's detailed notice of appeal challenged the entirety of the judgment allegingno fewer than 16 errors of fact and law. Johnson filed a memorandum supporting thejudgment on the following additional grounds:1 Irrespective of whether the revocation date should be considered as19 April 2013, the scheme of the Trade Marks Act, specifically ss 13,17, 25, 26 and 32, provides that there can be more than one concurrent'owner' of a trade mark.2 The fact that [ICB] was the owner of registered trade mark number648953 ZIPLOC at the date [Johnson] filed registered trade markapplication number 975954 ZIPLOC does not preclude [Johnson]being an 'owner' of the trade mark.3 [Johnson] is an owner of the trade mark ZIPLOC by virtue of itsapplication to register, intention to use and acquisition of the ZIPLOC31 At [158].32 See above at n 24.33 At [132] and [134].34 At [137]–[139].brand in 1998, confirmed by its right to register due to specialcircumstances (s 26(b)).The parties were unable to agree on the issues on appeal, filing separate lists.[35] We will consider the parties' arguments by reference to the following broadlyframed questions:(a) Did the High Court err in treating 19 April 2013 as the effectiverevocation date of RTM 648953?(b) Notwithstanding its subsequent revocation for non-use, was thepresence on the register of ICB's RTM 648953 on 19 April 2013 a barto Johnson filing an application for registration on that date?(c) Does first use of a trade mark determine ownership in perpetuity or canan initial entitlement to ownership be lost through cessation of use?(d) Did the High Court err in referring back to the Commissioner forhearing the issue of ownership of the ZIPLOC trade mark?Did the High Court err in treating 19 April 2013 as the effective revocation dateof RTM 648953?[36] It is convenient to address this issue first because it represents the ratio of thejudgment and it can be shortly disposed of.[37] The Judge recorded that she found "troubling" the Assistant Commissioner'sconclusion that, because Johnson had not sought revocation of RTM 648953 from adate earlier than 22 April 2013, ICB remained the owner as at 19 April 2013 and henceJohnson could not have owned all of the rights in the ZIPLOC trade mark at the dateof its application to register.35[38] The Judge appeared to view the so-called three day anomaly as an oversight oromission in the course of the revocation procedure, noting Johnson's explanation that,35 At [46]–[47].until receipt of ICB's notice of opposition to Johnson's application for registration, itdid not appreciate that revocation from an earlier date needed to be sought.36Addressing the emphasis placed on specific pleading in Omega SA v OmegaEngineering Inc37 the Judge stated that, while it might be desirable that an earlier dateis pleaded, it is not mandatory and the Commissioner retained a residual discretionunder s 68(2)(b) to further backdate the effective date of revocation where obvious orappropriate.38[39] The Judge then described the nature of the revocation hearing:[94] The revocation hearing was determined on the papers. There was noappearance of counsel. No steps were taken by Johnson to appeal therevocation decision or seek its recall, to seek an earlier date of revocationnamely 18 or 19 April 2013. Clearly, the problems facing Johnson, in seekingto register the ZIPLOC trade mark would have been obviated, in part, byappealing the decision or seeking such recall.[40] The Judge then reasoned:[96] The anomalous finding of ownership on the registration date is amatter that would normally be corrected on appeal, particularly in light of theAustin Nichols approach to general appeals.[97] In determining issues of ownership, it is unhelpful for a Commissionerto feel constrained by a pleading technicality, when it comes to the exercise ofa discretion. Johnson's application did not plead that the revocation shouldtake place from 19 April 2013, but it did seek revocation from the earliest datepossible, which often becomes apparent during a hearing, following argumentor evidence of non-use. If the circumstances require it, there should be noimpediment to the exercise of a discretion, when the strict application of aprinciple produces a problematic result.(Footnotes omitted).[41] In the High Court ICB challenged the Court's jurisdiction to backdate theeffective revocation date where the revocation issue was not on appeal before theCourt and the time for appealing that decision had long elapsed.39 However the Judgewas not deterred by that submission. She considered that there had been an error bythe Assistant Commissioner in her 2017 decision by "her failure to factor the36 At [92].37 Omega SA v Omega Engineering Inc [2003] EWHC 1334 (Ch), [2003] FSR 49 at [11].38 High Court judgment, above n 3, at [93].39 At [95].revocation into her final decision",40 which error the Judge considered was capable ofrectification in the High Court appeal. The Judge explained:[98] The Commissioner here, however, has recognised the anomaly andhas made a finding, as explained above, of special circumstances under s 26of the Act. On the basis of her finding, albeit it under s 25 and consequentiallys 26, the date of registration and the date of revocation should be regarded asoverlapping, as there was no impediment by dint of the marks deceiving orconfusing members of the public. On that basis, 19 April 2013 is theappropriate date at which ownership should be properly addressed, withoutthe complication of revocation occurring three days later on 22 April 2013.In the same way, as the 19 April 2013 date can be considered a notionaloverlap date, for all practical purposes, the revocation date should beconsidered, for reasons addressed later in this judgment, as 19 April 2013.[42] In this Court Mr Williams for ICB renewed his argument below that if Johnsonhad wished revocation to have been effective from 19 April 2013 it should haveexpressly pleaded that date and satisfied the Assistant Commissioner in 2014 that thegrounds for revocation of RTM 648953 existed at that earlier date. Johnson havingnot done so, s 68(2)(b) had no application. Consequently, the Judge's finding of errorby the Assistant Commissioner in the 2017 decision was misplaced. Rather the errorlay in the High Court's purported exercise of the discretion under s 68(2)(b) some twoand a half years after the event. That was not a power available for exercise in thecourse of an appeal from a decision on Johnson's application for registration.[43] Mr Arthur, for Johnson, did not endeavour to support this aspect of the Judge'sreasoning, the focus of his argument being on the issue which we next address.[44] Even if there had been a factual foundation enabling Johnson to request anearlier effective date of revocation under s 68(2)(b), the time for consideration of thatmatter was at the determination of the revocation application in June 2014. It was nota matter which could be revisited by the Assistant Commissioner in her 2017 decisionon Johnson's application to register ZIPLOC. Likewise the High Court on appeal fromthe 2017 decision had no jurisdiction to do so.[45] Hence the conclusion that the revocation date of RTM 648953 should beconsidered as 19 April 2013 was in error.40 At [100].Was the presence on the register of ICB's RTM 648953 on 19 April 2013 a bar toJohnson's application for registration?[46] ICB's case comprises the following propositions:(a) The relevant date for determining a claim to ownership of a trade markis the date of application for registration, relevantly 19 April 2013.(b) On 19 April 2013 ICB was the owner of RTM 648953 and hence theowner of the trade mark ZIPLOC. The fact that RTM 648953 wassubsequently revoked is irrelevant given that pursuant to s 68(2)(a)ICB's rights as owner of RTM 648953 ceased only from 22 April 2013.(c) A person cannot claim to be the owner of a trade mark if another personis the owner of it.(d) Because ICB was the owner of the trade mark ZIPLOC on 19 April2013 Johnson had no legitimate basis to claim to be the owner of theZIPLOC trade mark.[47] Johnson responds that ss 13, 17 and 25 entitle the Commissioner to considermatters at the time of determination of registration, thereby enabling a realisticappraisal of matters at that date and avoiding a purely theoretical focus on the nominalstate of the register as at the application date. Given the revocation of RTM 648953,its historic presence on the register on 19 April 2013 did not prevent Johnson claimingto be an owner of the trade mark ZIPLOC.[48] The principal issue for determination is whether in 2002 the Act changed thelaw which permitted the filing of an application to register trade mark A41 prior to anapplication for removal of trade mark B.41 See [11] above.The position prior to 2002[49] The Trade Marks Act 1953 was silent on the issue of the effective date ofrevocation of trade marks removed from the register but it appears to have been theaccepted view that revocation took effect only on the date of the order. In Australia itwas held that removal took effect from the date of the relevant order, not theconclusion of the relevant period of non-use.42 Similarly in Unilever plc v Cussons(New Zealand) Pty Ltd this Court remarked:43The present legislation speaks for itself. There is the sanction of removal fornon-use. No automatic invalidity stems from failure to use a registered mark.Until it is removed on application for rectification of the register, it remains,is valid and may support infringement proceedings.[50] Hence it would almost invariably have been the case that an application forregistration by an aspiring new owner would have been filed prior to the date of theorder directing the removal of the first registration. Indeed the omission to file anapplication for registration prior to the removal order would have afforded theopportunity to the owner of the revoked registration to lodge a pre-emptive freshapplication thereby securing priority over the party seeking to be registered.[51] The significance of the priority of filing was recognised by this Court inCussons, where, rather than commencing to use its trade mark, Unilever responded toCussons' overture by filing a second trade mark application, thereby securing priorityover Cussons' later application:44In this case, Cussons, in the belief that it enjoyed sufficiently good relationswith its competitor Unilever, took the risk of making an approach drawingattention to the vulnerability of the trade mark registration no 44598 withouttaking the usual precautions of filing an application to remove it (which couldhave been withdrawn if an arrangement was reached) and its own applicationto register to secure priority in the event of removal of the registration.By taking that stance, and making an assumption that Unilever would notattempt to improve its position, Cussons could not impose any duty uponUnilever.42 E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27, (2009) 175 FCR 386at [62]–[65].43 Unilever plc v Cussons (New Zealand) Pty Ltd [1997] 1 NZLR 433 (CA) at 441.44 At 442.Cussons confirmed the permissibility of the practice of the filing of applications forregistration by aspiring new owners in anticipation of a successful application forremoval of an extant registration.[52] A New Zealand example is Re Trade Mark Brandivino.45 Australian examplesinclude Legal & General Life of Australia Ltd v Carlton-Jones and Associates Pty Ltdwhere it was stated:46This [prior] mark is therefore no longer on the register, and, accordingly, doesnot now constitute grounds for objection under s 23, notwithstanding the factthat at the relevant date, 2 March 1979, it may have done so However, even if prior to 2002 the date of revocation had been treated as retrospectiveto the date of application for removal, it would still have been inevitable that someapplications for registration would have pre-dated the applicants' applications forrevocation because a not uncommon scenario was where the applicant had noknowledge of an extant registration, only becoming aware of it on receipt of theCommissioner's notice of non-compliance in the course of the examination procedure.[53] Almost ninety years ago the Comptroller-General explained the advantages ofthe practice in Re Trade Mark "Palmolive":47Further, it is a common practice going back for many years in the Trade MarksOffice, in cases where an objection has been raised to an Application underSection 19, to treat the objection as removed and to allow the Application toproceed if the cited registration has been suitably restricted, or cancelled, orassigned (with the relevant goodwill) to the Applicant for registration after thedate of the Application. If the interpretation of Section 19 for whichMr Whitehead contends were the right one, this practice would be contrary tothe Section, and it would be necessary in each such case to require theApplicant for registration to file a new Application dated after the date whenthe obstruction on the Register was removed. This course would presentobvious inconveniences and, even if I had doubts as to the interpretation ofSection 19, I should have had some difficulty in coming to a conclusion which45 Re Trade Mark Brandivino (1974) 1 NZIPR 254 (Patent Office) where Lincoln Vineyards Ltd'sregistration for the trade mark Brandivino dated from 8 June 1964. S Smith & Son Pty Ltd filedan application to register its own identical trade mark on 5 May 1976 followed by an applicationon 22 June 1976 for removal of Lincoln's registration from the register.46 Legal & General Life of Australia Ltd v Carlton-Jones and Associates Pty Ltd (1987) 9 IPR 447(Patent Office) at 451 where the application for registration was there made on 2 March 1979 butthe application for removal was made in 1985 and the order was granted in 1986. Similarly RollInternational Corp v Teleflora (Australia) Inc (1997) 40 IPR 318 (AIPO).47 Re Trade Mark "Palmolive" (1932) 49(8) RPC 269 at 277.would have had the effect of reversing or endangering a practice which hasbeen in operation for so long and with evident advantage to traders.(Emphasis added).[54] More recently in Kambly v Intersnack where Kambly contended on appeal thatregistration of Intersnack's trade marks were barred because on the date of theapplications (1989 and 1990) the Kambly trade marks were still registered,48 LightmanJ said:49The existence of a trade mark on the register at the date of application forregistration is not under the 1938 Act a bar to an application for registrationof another identical or similar trade mark so long as the previously registeredtrade mark is removed from the register by the date that the trade mark appliedfor is registered.Section 68(2)[55] The effect of s 68(2) is to advance the effective date of the removal of an RTMfrom the actual date of the removal order that had previously applied.50 It therebydeprives the owner of rights which it would otherwise have had in the period betweenthe dates of the application for removal and the order, or even earlier if s 68(2)(b) isinvoked. Its retrospective effect has a symmetry with s 100(b) whereby uponregistration an infringement proceeding may be taken in respect of events whichoccurred on or after the deemed date of registration. The subsection appears torespond to the point made in Cussons,51 that until removal the registration may supportinfringement proceedings, by providing a shield against such claims in respect ofdealings with the trade mark subsequent to the dates referred to in s 68(2).[56] Section 68(2) has its antecedents in s 46(6) of the Trade Marks Act 1994 (UK)and s 22(8) of the Trade Marks Act 1998 (Singapore).52 ICB's contention53 is founded48 Kambly SA Specialities de Biscuits Suisses v Intersnack Knabber-Gebäck GMBH & Co KG [2004]EWHC 943 (Ch). Kambly's prior marks were registered from 29 March 1960 and 12 April 1966;Intersnack's applications for registration filed on 23 May 1989 and 11 May 1990; Intersnack'sapplications for removal filed on 31 August 1993; and orders for removal made on 17 December1997.49 At [26]. The case was governed by the Trade Marks Act 1938 (UK) 1 & 2 Geo VI c 22by virtue of the transitional provisions of the Trade Marks Act 1994 (UK).50 At [49] above.51 At [49] above.52 Now s 22(7) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (Singapore).53 At [46(b)] above.on two decisions in those jurisdictions to the effect that an application for trade markA will be invalid if filed prior to the effective date of removal of trade mark B.[57] In RIVERIA Trade Mark Stella Products Ltd was the owner of RTM 1012621which had an effective date of registration of 13 June 1973.54 Franco Ices's applicationto revoke RTM 1012621 on account of Stella's non-use was granted with effect fromthe date of Franco's application, 21 May 2001. However the Trade Marks Registryruled that Franco's own registration for RIVERIA dated 22 March 2000 was invalidbecause, despite the revocation of Stella's registration, by dint of s 46(6) Stella's RTM1012621 remained enforceable in respect of matters arising at any time prior to thedate at which its rights ceased to have effect on 21 May 2001 stating:55 it is vital for a party seeking to revoke an earlier trade mark in order to clearthe way for its own application to make a request in its application for theconflicting earlier trade mark to be revoked with effect from a date whichprecedes the date of its own application for registration.[58] In Campomar SL v Nike International Ltd the Singapore Court of Appealconsidered there was much to be said for the observation in RIVERIA Trade Markabout the need to secure revocation from an effective date prior to the date of anapplication for registration of a later conflicting mark.56 The Court said:57To recapitulate, what we would underscore is that while the Registrar, inconsidering an application to register a mark in the face of an opposition unders 8(1), is entitled to take into account all the circumstances up to that point intime, including the revocation of an earlier identical registered mark, theRegistrar should not disregard the fact, as in this case, that the registration ofthe later mark would give rise to there being on the register two identicalmarks being owned by two different parties for a period of time. As we see it,the provisions in s 22(7)(b) of the TMA 2005 must have been added to address,inter alia, this difficulty.It concluded:58What is critically important, whether it is an opposition proceeding or aninvalidation proceeding, is for the Registrar to always bear in mind the needto ensure that the entry of a later mark on the register would not result in the54 RIVERIA Trade Mark [2003] RPC 50 (Trade Marks Registry).55 At [20].56 Campomar SL v Nike International Ltd [2011] SGCA 6, [2011] 2 SLR 846.57 At [40].58 At [41].existence of two similar or identical marks, belonging to different parties, onthe register at any period of time.(Emphasis in original).[59] The Court of Appeal in Campomar viewed Kambly as explicable on the basisthat the Trade Marks Act 1938 (UK) did not contain a provision equivalent to s 68(2):59Similarly, the fact that there was a period of overlap between the effective dateof registration of the later Intersnack Trade Marks (respectively 23 May 1989and 11 May 1990) and the effective date of revocation of the old KamblyTrade Marks (31 August 1993) did not appear to have been addressed byLightman J in Kambly Granted, Lightman J's views were expressed in thecontext of the UK TMA 1938, which did not contain any equivalent of s 22(7)of Singapore's TMA 2005. A similar provision was however introduced sometime later into the UK TMA 1994 (see s 46(6) of the UK TMA 1994).[60] The reasoning in Campomar is seated in the proposition that the presence oftwo identical RTMs on the register owned by two different parties, even for a shortperiod of time and in the past, was an unacceptable phenomenon.60 The Courtconcluded that the equivalent of s 68(2) must have been added to address that"problem" by permitting application to be made for an "earlier" revocation date.61[61] In our view the interpretation in both RIVERIA and Campomar of provisionsequivalent to s 68(2) is erroneous. We do not consider that the addition of s 68(2)reflected a fundamental change from the law and practice relating to applications forregistration under the 1938 UK Act and the 1953 Act. Rather it was simply anameliorative provision to prevent the prospect of infringement proceedings beingpursued by RTM owners whose registrations had been revoked. We consider suchinterpretation finds support both in the legislative history and in the practicalimperatives of the current removal procedure in s 66(3) and (4) of the Act.59 At [32].60 Despite the fact that the 2005 Singapore Act contained the registered trade mark defence (s 28(3)),the honest concurrent use exception (s 9(1)) and conferred on the Registrar a discretion to registertrade mark A where the proprietor of trade mark B consented (s 8(9)).61 At [38].The legislative history[62] The earliest manifestation of a provision equivalent to s 68(2) was s 46(6) ofthe Trade Marks Act 1994 (UK). While the balance of s 4662 can generally be sourcedto arts 12(1)63 and (13) of the Council of the European Communities' Directive onTrade Marks of December 1988 (the European Directive),64 there is no provision inthe European Directive directly equivalent to s 68(2). However we infer that thegenesis of s 46(6) is to be found in art 11(3):Without prejudice to the application of Article 12, where a counter-claim forrevocation is made, any Member State may provide that a trade mark may notbe successfully invoked in infringement proceedings if it is established as aresult of a plea that the trade mark could be revoked pursuant to Article 12(1).[63] While it provides for a shield against infringement proceedings, art 11(3) is notexplicit as to the effective date of the protection. Furthermore the fact of the referenceto art 12(1) appears to confine the shield to revocation on the ground of non-usewhereas ss 46(6) and 68(2) apply to revocation on any of the statutory grounds.[64] However we consider that it was this protection against an infringementproceeding based on a revoked trade mark which was translated into s 46(6). We candiscern nothing to suggest that s 46(6) had an additional and distinct objective ofchanging the previous law under the 1938 UK Act concerning the validity of trademark applications filed during the currency of registrations ultimately removed fornon-use.62 Section 46(1) and (3) are essentially similar to s 66(1), (1A), (3) and (4) of the 2002 Act, save forthe fact that the applicable periods of time in the English statute are five years and three months.63 Article 12(1) states: A trade mark shall be liable to revocation if, within a continuous period of fiveyears, it has not been put to genuine use in the Member State in connection with the goods orservices in respect of which it is registered, and there are no proper reasons for non-use; however,no person may claim that the proprietor's rights in a trade mark should be revoked where, duringthe interval between expiry of the five-year period and filing of the application for revocation,genuine use of the trade mark has been stated or resumed; the commencement or resumption ofuse within a period of three months preceding the filing of the application for revocation whichbegan at the earliest on expiry of the continuous period of five years of non-use, shall, however,be disregarded where preparations for the commencement or resumption occur only after theproprietor becomes aware that the application for revocation may be filed.64 Directive 89/104/EEC First Council Directive of 21 December 1988 to approximate the laws ofthe Member States relating to trade marks [1988] OJ L40/1.[65] We consider that that interpretation finds support in the retention in s 11(1)65of the 1994 UK Act of the tenor of s 4(4) of the 1938 UK Act which stated:(4) The use of a registered trade mark, being one of two or more registeredtrade marks that are identical or nearly resemble each other, in exercise of theright to the use of that trade mark given by registration as aforesaid, shall notbe deemed to be an infringement of the right so given to the use of any otherof those trade marks.The equivalent provision in the 1953 Act was s 8(4).[66] Such a defence was not contained in the European Directive. Hence it was notin the original draft of the Trade Marks Bill 1994 (UK). However at the Report stagethe defence was reintroduced so as to provide equivalent protection to that previouslyavailable under s 4(4). That defence is preserved in s 93 of the 2002 Act.[67] The 13th edition of Kerly's Law of Trade Marks and Trade Names in 2001made the following observation on the RTM defence:66The defence applies only to cases where the defendant is actually validlyregistered. If a defendant is threatened or sued and has not yet registered hismark, although it is capable of registration, then he ought immediately to applyfor registration. In a proper case the court may stay proceedings in an actionfor infringement until an application for registration has been decided.In various cases brought under the Trade Marks Act 1938 and earlierlegislation, such applications were made and it is reasonable to suppose thatunder the 1994 Act the courts will adopt a similar approach; There was no suggestion that "capable of registration" contemplated as a prerequisitean existing or contemporaneous application for revocation.[68] Counsels' submissions did not refer to, nor did our own research reveal, anysuggestion in the travaux preparatoires67 or the parliamentary debates that it was theintention of the legislature to prohibit the long-established practice of filing65 Section 11(1) states: A registered trade mark is not infringed by the use of another registered trademark in relation to goods or services for which the latter is registered (but see section 47(6) (effectof declaration of invalidity of registration).66 The edition following the UK 1994 Act: David Kitchin and others Kerly's Law of Trade Marksand Trade Names (13th ed, Sweet & Maxwell, London, 2001) at [13–109].67 Including the Ministry of Commerce Review of Industrial Property Rights: Patents, Trade Marksand Designs — Possible Options for Reform (vol 1, July 1990) and the Ministry of CommerceReform of the Trade Marks Act 1953 — Proposed Recommendations (December 1991).applications for registration in anticipation of and conditional upon68 a successfulapplication for removal for non-use of an extant RTM. Had it been the legislature'sintention to do so we would have expected that such a change would have been notonly well-publicised but also effected by more direct means than s 68(2).The implications of s 66(3) and (4)[69] Having regard to the potential risk that a vulnerable registered owner mightfile a fresh application as in the Cussons scenario69 we consider that the change to thelaw which the RIVERIA and Campomar interpretations contemplate would besurprising, particularly given the revised nature of the non-use ground introduced bythe European Directive.[70] As Lord Diplock explained in GE Trade Mark, the law of trade marks assumedwhat is substantially its modern form with the passing of the Trade Marks Act 1905(UK).70 The 1905 Act introduced a provision providing for removal of a mark fromthe register for non-use.71 Under the prior legislation such a power had been implicitin the common law meaning of trade mark, which involved a requirement that it shouldbe in actual use as such.[71] Such a provision first appeared in the New Zealand statute book in the Patents,Designs and Trade-Marks Act 1911:90 A registered trade-mark may, on the application to the Court of anyperson aggrieved, be taken off the register in respect of any of the goods forwhich it is registered, on the ground that it was registered by the proprietor ora predecessor in title without any bona fide intention to use the same inconnection with those goods, and there has in fact been no bona fide user ofthe same in connection therewith, or on the ground that there has been no bonafide user of the trade-mark in connection with those goods during the fiveyears immediately preceding the application, unless in either case the non-useris shown to be due to special circumstances in the trade and not to anyintention not to use or to abandon the trade-mark in respect of those goods.68 See Re Trade Mark "Palmolive", above n 47.69 At [51] above.70 GE Trade Mark [1973] RPC 297 (HL) at 331.71 Trade Marks Act 1905 (UK) 5 Edward VII c 15, s 37.[72] As Kerly noted,72 it was generally considered advisable under that provision tostart proceedings for rectification without warning because, if warning were given, theproprietor might begin to use the mark at once and so defeat a subsequent application.However the need to do so evaporated with the introduction in s 26 of the 1938 UKAct (and subsequently in s 28 of the Patents, Designs and Trade-Marks AmendmentAct 1939) of the one month grace period after the requisite continuous period ofnon-use.[73] In the context of the equivalent Australian provision, Shanahan's AustralianLaw of Trade Marks and Passing Off explained the rationale for the one month periodfollowing the non-use period as allowing a prospective applicant for removal theopportunity to invite the registered owner to cancel or limit the registration voluntarily,without thereby running the risk that, by immediately commencing use of the trademark, the registered owner would defeat a subsequent removal application.73[74] Kerly stated that not only did the section enable a warning to be given but, inview of the then rules as to the costs of uncontested proceedings it was normallyadvisable to invite the proprietor to apply voluntarily for rectification beforeproceedings were commenced.74 While an intending applicant could safely deferfiling its removal application pending negotiation, nevertheless as Cussonsdemonstrated it was prudent to file an application for registration of one's own trademark in order to establish its priority.[75] The non-use provision in the 1953 Act was amended by the Trade MarksAmendment Act 1994 which removed the ground based on lack of intention to use andsubstituted s 35(1) as follows:Subject to the provisions of section 36 of this Act, a registered trade mark maybe taken off the register in respect of any of the goods or services in respectof which it is registered on application by any person aggrieved to the Courtor, at the option of the applicant and subject to the provisions of section 67 ofthis Act, to the Commissioner, on the ground that up to the date one monthbefore the date of the application a continuous period of 5 years or longer72 TA Blanco White and Robin Jacob Kerly's Law of Trade Marks and Trade Names (10th ed, Sweet& Maxwell, London, 1972) at [11–40].73 Mark Davison and Ian Horak Shanahan's Australian Law of Trade Marks and Passing Off (6th ed,Thomson Reuters, Sydney, 2016) at [70.1015].74 TA Blanco White and Robin Jacob, above n 72, at [11–40].elapsed during which the trade mark was a registered trade mark and duringwhich there was no bona fide use thereof in relation to those goods or servicesby any proprietor thereof for the time being.[76] However the changes reflected in s 66(3) and (4) of the 2002 Act demanded arevised strategy. The reason for this was that commencement or resumption of use bythe owner within the period between the expiry of the three year period and theapplication for revocation would defeat the application if preparation for suchcommencement or resumption had begun prior to the owner becoming aware that theapplication might be made. To reduce the risk of that prospect an applicant needs toensure that the owner is put on notice.[77] Kerly explained the options for an applicant for registration with reference tothe three month grace period in s 46(3) of the 1994 UK Act:75Commencement or resumption of genuine use within that three-month periodis disregarded unless preparations for the commencement or resumption beganbefore the proprietor became aware that the application for revocation mightbe made. This creates something of a dilemma for the applicant forrevocation. If they notify the proprietor of their intention to bring anapplication at too early a stage, they might give the proprietor the chance toput their mark into use before the five-year period in contemplation hadelapsed. The applicant then has to deal with the issue of whether the use wasgenuine or not, which it is better to avoid. If the notification comes too late,then the proprietor might have begun preparations for commencement orresumption of use before they were aware an application might be made,giving rise to the risk that the application would be defeated bycommencement or resumption of use within the three-month grace period.Perhaps the best, but not necessarily perfect solution to the dilemma is tonotify the proprietor as the five-year period expires. The applicant takes therisk that preparations for use have begun.[78] While such notification might reduce the risk of intervening genuine use,nevertheless in light of Cussons, in order to avoid the risk of losing priority it wouldstill be necessary for the applicant to lodge its application for registration at the sametime as putting the owner on notice for the purposes of s 66(4). However, if thereasoning in RIVERIA and Campomar was sound, such that the application forregistration could not pre-date the application for revocation, then the object of theone month grace period would be lost. The applicant and the owner would be deprivedof its intended benefit. Such a consequence would defeat the object of the provision.75 James Mellor and others Kerly's Law of Trade Marks and Trade Names (16th ed, Sweet &Maxwell, London, 2018) at [12.087].The technique for backdating the effective date of removal[79] It is also instructive to explore the implications of Campomar's proposition thata reason for the earlier date option in s 22(7)(b) (the Singaporean equivalent ofs 68(2)(b)) was in order to avoid the so called "problem" of concurrent registrationsof different owners.76 It is important to emphasise that, in order to be available for anorder under that provision, the earlier date must be a date on which the grounds forrevocation existed — it may not be merely a nominal date. Hence in relation to thenon-use ground for removal in New Zealand the earlier date would need to be at leastthree years and one month after the commencement of the non-use.[80] Thus in order to invoke an earlier s 68(2)(b) date, say six months prior to thedate of an application for revocation, the applicant would need to be confident thatthere had been an earlier six month period of non-use preceding the commencementof the continuous three year period. Of course, if that were known to be the position,then the applicant could have filed its application for revocation six months earlier.By waiting for that additional six months to elapse (in order to avoid the "problem")the applicant would run the risk that the owner might commence use of its trade markin the last six months of the three year and six month period, with the result that theentitlement to seek revocation would be lost.[81] It does not seem to be consistent with the philosophy of the statute that, in orderfor an applicant's application for registration to be valid, it is necessary for theapplicant to allow the owner a de facto extended period of non-use before itsregistration is challenged. As the Court of Appeal in Philosophy Di Alberta FerrettiTrade Mark observed in the context of a discussion about the point in time at whichan application for revocation can be filed:77Further, one might expect that a prompt application would serve the legislativepurpose better. Trade marks confer a statutory monopoly on the proprietor.Their function is to give that monopoly to the proprietor for the use of thetrade mark. If it is not used for the five-year period, it should be revoked.The editors of Kerly say in para 9-43:The application for revocation can be brought as soon as five yearshas elapsed. In fact, if an application under section 46(1)(a) is76 Campomar SL v Nike International Ltd, above n 56, at [41].77 Philosophy Di Alberta Ferretti Trade Mark [2002] EWCA Civ 921, [2003] RPC 15 at [7]–[8].contemplated it is normally prudent to commence the application assoon as possible after the five-year period has elapsed, for reasonsconnected with other constraints imposed by the Act.Then in para 9-44:The general effect of this is that it is risky to delay commencing theapplication for revocation I agree. It would be remarkable if the intention of the legislation had been toextend in all cases the five-year period by three months, when the onlyindication of that intention is by the mechanism of the proviso to s 46(3).[82] It is not an answer to say that, upon the expiry of the three year period of knownnon-use, an applicant could opt for an earlier date in its application in the hope thatthe owner might not be able to establish use in the period prior to the three yearcontinuous period of non-use. Take the case where since registration there has beenno use at all by the owner. The continuous period of three years can only begin to runfrom the actual date of registration. Where application to revoke is made immediatelyfollowing the expiry of the statutory period there will be no earlier period available toinvoke. Hence the applicant's only option would be to allow a de facto extension ofthe non-use period by waiting for the expiration of an extended period of time whichwould enable it to nominate an earlier effective date of revocation.Conclusion[83] For these reasons we do not consider that the interpretation which found favourin RIVERIA and Campomar is consistent with the scheme of the legislation. In ourview the purpose which Campomar attributes to the equivalent of s 68(2) is misplaced.Although s 68(2) enables the effective date of removal to be earlier than the date ofthe actual order for removal, it has no bearing on the date on which an applicant forrevocation may file its own application for registration. As noted at [68] above, wecan discern no indication that the legislature contemplated such a significant changeto long-established trade mark practice.[84] While issues concerning the fact and extent of use of a trade mark and theintention to use a trade mark are determined as at the date of filing an application,78the critical date for consideration of the state of the register is the actual date of entry78 Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 61.on the register.79 We agree with Mr Arthur that consideration of post applicationdevelopments is consistent with the scheme of the Act80 and manifest in IntellectualProperty Office of New Zealand practice.81 There is validity in his point that if ICB'sthesis was sound, then ICB's own RTM 648953 should never have been registered.82[85] Hence we conclude that the fact that Johnson's application for registration wasfiled three days prior to the effective date of removal of RTM 648953 via s 68(2)(a)had no bearing on the validity of Johnson's application. The answer to this issue isno.Does first use of a trade mark determine ownership in perpetuity or can an initialentitlement to ownership be lost through cessation of use?[86] Mr Williams referred to this Court's observations in The North Face ApparelCorp v Sanyang Industry Co Ltd as a helpful summary of the law:83[21] The applicant for registration carries the onus of proving ownership.As a matter of interpretation, a person "claiming to be the owner" must justifyits claim and establish its right. Accordingly, the applicant should be inpossession of a proprietary right which if questioned can be substantiated.[22] In order to establish ownership, the applicant must establish that it isthe first person to use the mark in New Zealand; and that, if challenged, thereis no prior use by another party. (Footnotes omitted).[87] We did not understand Mr Arthur to take issue with those well-establishedprinciples so far as an application for a first registration of a trade mark is concerned.He accepted that, subject to considerations such as honest concurrent user and special79 Kambly v Intersnack, above n 48; and Campomar SL v Nike International Ltd, above n 56.80 Section 44(2) of the Act and regs 63 and 64 of the Trade Mark Regulations 2003 which allow foran application to be put into abeyance pending the outcome of an opposition proceeding in respectof a prior application, or cancellation, revocation or invalidity proceedings in respect of a priorregistration. See also NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd [2011]NZCA 264, [2011] 3 NZLR 206 at [66]–[69], [71] and [74].81 Intellectual Property Office of New Zealand "Practice Guidelines: Overcoming a citation"(27 October 2015) <www.iponz.govt.nz> at [7.9].82 ICB's RTM 648953 was registered on 8 June 2006 with effect from 22 November 2001.However RTMs 109101 and 140148 were removed on 1 February 2005 (with effect from7 December 2001) and RTM 313887 was removed on 27 January 2006 (with effect from5 September 2005).83 The North Face Apparel Corp v Sanyang Industry Co Ltd [2014] NZCA 398 which in turn drewon observations in Aqua Technics Pool and Spa Centre New Zealand Ltd v Aqua-Tech Ltd [2007]NZCA 90.circumstances within the scope of s 26(b), prior genuine use of a trade mark by anopponent to an application would preclude an applicant's legitimate claim toownership.[88] However he submitted that it was recognised in North Shore Toy Co Ltd vCharles L Stevenson Ltd84 that, while ownership of a trade mark can be acquired byuse, it can also be lost by non-use, emphasising that that is consistent with the statutoryscheme to which we referred at [13] above. In addition he drew attention to the factthat the Act provides not only for an abbreviated non-use period of three years but alsothere is no discretion to retain a non-used trade mark on the register.85 He argued thatit would be anomalous if a trade mark registration can be removed for three years'non-use but that use prior to that three year period could be relied upon as residualownership to prevent another person registering the same trade mark.[89] At common law property in a trade mark could only be acquired by public useof it as such by the proprietor but property was lost by disuse.86 The same principleunderpins the statutory procedure for removal of registrations for non-use of trademarks. The recital to the European Directive relevantly stated:Whereas in order to reduce the total number of trade marks registered andprotected in the Community and, consequently, the number of conflicts whicharise between them, it is essential to require that registered trade marks mustactually be used or, if not used, be subject to revocation [90] In Kambly Lightman J explained the implications of non-use in this way:87As it seems to me the five year non-user is a statutory modification of thecommon law doctrine of abandonment of trade mark. Non-user for thestatutory period has the practical effect for the purposes of the 1938 Act of anabandonment, and it cannot be open to the former registered proprietor of thetrade mark removed from the register on this ground to seek to rely on earlier[use] to establish a trade mark which bars registration by the successfulapplicant for rectification of his own trade mark. To allow Kambly to do thiswould frustrate the purpose and effect of the [decision to order removal on theground of non-use] and section 26.84 North Shore Toy Co Ltd v Charles L Stevenson Ltd [1973] 1 NZLR 562 (SC).85 Crocodile International Pte Ltd v Lacoste, above n 12, at [88] and [91]–[97].86 GE Trade Mark, above n 70, at 325–326.87 Kambly v Intersnack, above n 48, at [35].[91] We agree with that reasoning. In our view if a person whose RTM is removedfor non-use wishes to make a fresh application to register the trade mark, that personcan only rely on that person's use in support of a claim to ownership which occurssubsequent to the continuous period of three years non-use. While earlier use whichpre-dates the continuous period of non-use may remain relevant in the context of theconsideration of issues of deception or confusion under s 17(1)(a), such earlier usemay not be invoked in support of an assertion of ownership. Consequently theNovember 2009 use upon which ICB sought to rely cannot be prayed in aid of ICB'sopposition on the grounds of prior ownership to Johnson's application.88Was a reference back of the ownership question erroneous?[92] A reference back to the Assistant Commissioner for determination of the issuesat [159] of the High Court judgment was perhaps understandable given the Judge'sfindings on the other aspects of the appeal. However while we also conclude that thedecision of the Assistant Commissioner was in error, we reach that conclusion forreasons different from those of the Judge.[93] We have concluded that Johnson's application to register was validly made on19 April 2013 notwithstanding that the effective date of removal of ICB's RTM648953 was 22 April 2013. We have also determined that the use which ICB purportedto rely on in support of its further application for registration, namely the invoicing ofproduct by Hefty NZ Ltd to Real Foods Ltd in 2009, does not qualify as use which cansupport a claim to ownership, given that it occurred prior to the period of non-usewhich resulted in the removal of ICB's prior registration.[94] If there remained for determination issues under s 17 concerning theacceptance of Johnson's application for registration, then it would be necessary for thematter to be referred back for the Assistant Commissioner's consideration.However that is not the case. The Assistant Commissioner rejected ICB's grounds ofopposition to Johnson's application which invoked s 17(1)(a) and (b). There was nocross-appeal by ICB in relation to that part of the Assistant Commissioner's decision.88 See above n 24.[95] Consequently in view of our conclusions, there would be no point in referringback to the Assistant Commissioner the question of ownership because, consistentwith our reasons, the only conclusion which the Assistant Commissioner could reachis that, as a person intending to use the trade mark, Johnson has a legitimate claim toownership which is not defeated by any qualifying use of the trade mark by ICB.Result[96] The appeal against the order quashing the Assistant Commissioner's findingthat ICB is the owner of the ZIPLOC trade mark is dismissed.[97] The direction that the proceeding be referred back to the AssistantCommissioner for a new hearing of the issues at [159] of the High Court judgment isquashed.[98] Trade mark application 975954 for ZIPLOC is to proceed to registration.Costs[99] The appellant must pay the respondent costs for a standard appeal on a band Abasis and usual disbursements.Solicitors:Bell Gully, Auckland for AppellantAJ Park, Auckland for Respondent