Shao Chenghu, Shao Jun, and Shao Li (the “Applicant”) applied to revoke Barilla’s trade mark registration BARILLA & device (the “Trade Mark”) in class 42 (restaurant and catering services).
The Trade Mark was blocking the Applicant’s application for the mark Barilla Dumpling.
In its allegations, the Applicant noted that Barilla had at no time, during the relevant 3-year period, put the Trade Mark into genuine use in the course of trade, in New Zealand, in relation to the class 42 services.
Barilla confirmed the Applicant’s allegations of non-use but argued that the Commissioner should exercise the discretion in its favour and not revoke the registration given Barilla’s use of the registered mark BARILLA for other goods and services, being: pasta and pasta sauces, a pasta master cooking class and cooking demonstrations at The Auckland Food Show.
The Assistant Commissioner considered each of the factors set out by Moore J in Cure Kids[1] for determining whether its discretion should be exercised:
Did the owner intend to abandon the mark? Barilla submitted that there was no evidence of any conscious decision not to expand into restaurant and catering services. However, the Assistant Commissioner found that it was strongly arguable that Barilla had abandoned the Trade Mark in respect of the relevant services.
Were the steps taken to revive the mark bona fide and unrelated to the application for revocation? The Assistant Commissioner noted that Barilla had not taken steps to use or to “revive” the mark in respect of the relevant services.
During the period of dormancy did the owner, nonetheless, have a residual reputation in the mark? While the Assistant Commissioner agreed that the evidence showed use in relation to pasta and pasta sauces, it refuted Barilla’s arguments that the evidence established a reputation in New Zealand in respect of services such as cooking classes. Whilst Barilla had undertaken some sponsorship events such as cooking classes and demonstrations, it was not in the business of running such classes or demonstrations. On that basis, it was found that there was no residual reputation.
Has there been a credible and effective use of the mark after the relevant period ended? The Assistant Commissioner concluded that there was no basis for such inference.
[1] Cure Kids v National Sids Council of Australia [2014] NZHC 3366 at 222.
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.