Unilever applied for the rectification of the International Registration for SILKOLENE that was protected in New Zealand and owned by Fuchs Petrolub. The rectification was on the basis that the Class 4 goods of the protected mark included the proprietary term ‘VASELINE’, which is owned by Unilever.
The owner of the protected mark did not take part in the proceeding, so it was left to the Assistant Commissioner to review the applicant for rectification’s evidence and arguments.
The Assistant Commissioner determined that the applicant was clearly a person with an interest in the protected mark on the basis that it holds several New Zealand trade mark registrations for VASELINE and that protecting a trade mark that included ‘VASELINE’ within the specification of a third party was an error by the Intellectual Property Office of New Zealand.
The applicant for rectification proposed that the term ‘VASELINE’ be amended to ‘petroleum jelly’, a course of action that the Assistant Commissioner agreed would not affect the validity of the protected mark and was, therefore, allowable.
The term is to be amended within the current goods of the protected mark.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.
Trade Marks Team