8 May 2023
The Court granted leave under r20.16 because the proposed affidavit was fresh (relating to post‑Relevant Period sales unavailable at the first hearing), relevant and cogent to whether earlier preparatory use was genuine, and special reasons existed; the affidavit was admitted subject to a timetable for service of evidence and costs were reserved.
27 Feb 2023
Renault failed to establish special reasons for admitting non‑fresh evidence on appeal; the Trade Marks Act and Regulations require owners opposing revocation to file a counterstatement and evidence at first instance and reg96(2) mandated decision on the applicant's documents when Renault did not; absent an explanation or exceptional circumstances the court must refuse leave and dismiss the appeal, upholding the Assistant Commissioner's revocation decision.
13 Jul 2022
Owner failed to discharge the onus of proving genuine use for the relevant continuous three‑year period under s 66(1)(a); accordingly revocation was mandatory and, under s 68(2), the Court backdated the cessation of rights to 19 February 2017 because the grounds for revocation existed from that date and backdating was necessary to remove the barrier to the applicant's registration.
18 Aug 2021
Consent given by the respondent after the Assistant Commissioner's decision and the parties' settlement removing the overlapping specification constituted special circumstances under s26(a); the Court, exercising powers under s173 and r20.19, ordered registration of the appellant's trade mark applications in the amended class 25 and the other specified classes.
14 Dec 2020
The s75 presumption bars a challenger from bringing a s18(1)(a) invalidity challenge more than seven years after deemed registration; alternatively on the merits the description of the mark as Pantone 376C applied as the predominant colour was a valid sign capable of graphical representation and the written description controls so Frucor's consistent use of Pantone 376C defeated revocation for non-use.
15 Oct 2020
Court held the register is assessed at the date of entry onto the register but the application date remains relevant because a later registration cannot validly coexist with an earlier registered mark unless the earlier registration is revoked with an effective date preceding the later application or revocation is backdated under s 68(2) or special circumstances under s 26 apply; on facts special circumstances had been found so Johnson's application could proceed and the appeal was dismissed.
23 Jul 2020
The Court held that s 25(1)(b) is determined by a notional fair‑use comparison and does not require actual use or reputation of the registered proprietor; applying that test the Court found ACTAZIN and ActiPhen to be similar and that Pharmazen failed to prove on the balance of probabilities that use of ActiPhen would not be likely to deceive or confuse, therefore the appeal is dismissed.
11 May 2020
The Assistant Commissioner's decision is upheld: the Court found genuine use of the Fokker Brothers mark for gravy (class 30) during Feb-Nov 2014, and held that the non-use in the relevant period was due to special circumstances outside the owner's control — specifically the breakdown of the personal relationship between the sole shareholder and sole director and the director's assistance to a competitor prior to removal — which caused FBL's inability to use the mark; accordingly the registration must not be revoked under s 66(2).
21 Oct 2019
The Court held there is a serious question to be tried that respondents' use of 'NetXpress' may infringe Winc's registered NETXPRESS marks and may breach the Fair Trading Act and constitute passing off; it was not persuaded respondents had an effective licence to the NETXPRESS brand under the SPA as contended; the balance of convenience favored Winc because damages would be an inadequate remedy for dilution of a registered mark and Winc's undertaking as to damages was supported, and therefore an interim injunction restraining respondents' use of the NETXPRESS marks pending trial was granted.
9 Jul 2019
Leave to appeal was granted solely on the question of whether the Court of Appeal correctly interpreted s 68(2) of the Trade Marks Act 2002; other grounds were dismissed because only that statutory interpretation question raised an issue of principle appropriate for leave.