New Zealand Case Law: Decisions & Judgments

Topic

Honest concurrent use

Legal area

Court

30 Oct 2018

CATERPILLAR INCORPORATED v TIGERCAT INTERNATIONAL INCORPORATED [2018] NZHC 2808

Citation

[2018] NZHC 2808
Court

High Court

The High Court upheld the Commissioner's exercise of discretion under s 194(b), concluding it was fair and reasonable to admit Tigercat's amended counterstatement including the honest concurrent use paragraph because most amendments clarified existing matters, any expansion could be addressed by Caterpillar in reply or by limited further evidence as directed, and the Commissioner did not err in law or exceed jurisdiction in giving evidence directions under the Regulations; appeal dismissed.
13 Sept 2017

Re Lacoste [2017] NZHC 2216

Citation

[2017] NZHC 2216
Court

High Court

Lacoste established other special circumstances under s26 based on long-standing use and reputation in New Zealand of its registered word and device marks, the identity of the core device element with the composite mark, and the absence of any CIL trading presence or use in New Zealand; accordingly the composite mark No. 998331 must be accepted for registration despite the cited prior application.
31 Jul 2017

NATIONAL MINI STORAGE LTD v NATIONAL STORAGE LIMITED [2017] NZHC 1775

Citation

[2017] NZHC 1775
Court

High Court

The Court refused the quia timet injunction and dismissed the claim because the plaintiff failed to prove that defendants' use of "National Storage" in Auckland was likely to mislead or deceive a substantial number of consumers or amount to passing off; the words "National" and "Storage" are descriptive, the prominent distinctive element of the plaintiff's mark is "Mini", the parties' branding and websites are visually distinct, actual confusion evidence was minimal, defendants gave enforceable online undertakings and plaintiff's prior acquiescence and delay weighed against equitable relief.
31 Mar 2011

THE MUIR ELECTRICAL COMPANY PTY LIMITED V THE GOOD GUYS GROUP LIMITED HC WN CIV-2010-485-001955

Citation

openlaw-21943bf2_2cb6_4f6f_94a8_4a618b3b21b0.pdf
Court

High Court

The Commissioner's decision not to propose revocation of acceptance was not a decision appealable under s170 by a third party; a third party seeking revocation is not a 'person aggrieved' for s170 purposes at the pre-registration stage and the statutory scheme requires contested factual disputes to be resolved in opposition proceedings. The appellant did not establish that acceptance was made in error or omission of necessary objective facts such that s42(1)(a) jurisdiction to revoke was triggered.

New Zealand Case Law

CATERPILLAR INCORPORATED v TIGERCAT INTERNATIONAL INCORPORATED [2018] NZHC 2808

Re Lacoste [2017] NZHC 2216

NATIONAL MINI STORAGE LTD v NATIONAL STORAGE LIMITED [2017] NZHC 1775

THE MUIR ELECTRICAL COMPANY PTY LIMITED V THE GOOD GUYS GROUP LIMITED HC WN CIV-2010-485-001955