Honest Coffee applied to revoke Ethical Coffee’s registration for the trade mark THE ETHICAL COFFE CO. & device (the “Trade Mark”) in class 30 on the basis of non-use.
In its allegations, Honest Coffee noted that Ethical Coffee 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 30 goods.
The issue here was whether Ethical Coffee’s evidence was sufficient to defend the non-use action. Recalling the main principles relating to genuine use of the mark, the Assistant Commissioner pointed out that the issue of genuine use could not be determined on a quantitative basis alone and a single use may be sufficient if established conclusively.
Ethical Coffee had not made any sales of goods bearing the mark but relied on the following evidence:
Preparatory steps to use the mark on product packaging
Ethical Coffee had engaged in discussions with their external design and advertising agency as well as with their internal management team about the use of the Trade Mark (including on product packaging).
The Assistant Commissioner found that it was not clear from Ethical Coffee’s evidence whether or not the preparatory steps took place during the relevant period. Therefore, these preparatory steps were deemed not to amount to genuine use of the Trade Mark.
Use on website
In the Assistant Commissioner’s view, simply placing a device mark on a website that sells goods branded with entirely different trade marks does not constitute use of the trade mark in respect of those goods.
Overall, the Assistant Commissioner found that Ethical Coffee did not establish that it had used the Trade Mark in relation to the relevant goods during the relevant period.
The Registration is to be revoked.
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.