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Fokker Brothers Limited v Fokker Brothers Inc Limited [2019] NZIPOTM 2

An application was filed by Fokker Brothers Inc Limited (the Revocation Applicant) to revoke New Zealand Registration No. 743062 FOKKER BROTHERS owned by Fokker Brothers Limited (the Revocation Opponent).

The revocation was being sought on the basis that the Revocation Opponent had not used its trade mark for the goods/services covered thereunder during a continuous three year period commencing 24 June 2012.

For background, the Revocation Opponent was jointly owned by Mr and Mrs Molloy until 2015, when, following the divorce of Mr and Mrs Molloy, Mrs Molloy became the sole owner (director and shareholder). The Revocation Applicant was incorporated in July 2015 and its sole director and shareholder is Mr Molloy’s sister, Ms Julie Christie.

From the evidence filed, the Assistant Commissioner narrowed down five possible ‘uses’ of the trade mark by the Revocation Opponent during the relevant non-use period.

First, there was the preparatory work done by the Revocation Opponent in 2013 in planning to open a hospitality brand. Whilst this did point to a genuine intention to use, it was not sufficient to demonstrate the ‘use’ required to defeat a revocation action.

Next, there was the use of the trade mark on gravy products and beer at Harry’s Place (a bar operated by the Revocation Opponent from 2014-2015). From the evidence filed, the Assistant Commissioner could only find that this was use in connection with ‘gravy’ and ‘beer’ only and not the wider restaurant services at issue.

Further preparatory use, this time from 2015 was then considered. Again, these actions were considered sufficient to point to an intention to use, but insufficient for actual ‘use’ to defeat revocation.

From the evidence, it appeared to the Assistant Commissioner that Mr Molloy was taking ‘tangible steps’ to set up a FOKKER BROTHERS bar/restaurant prior to being removed as a director of the Revocation Opponent on 28 August 2015. The Removal Applicant opened a FOKKER BROS restaurant/bar in September 2015. During the period December 2014 – July 2015, Mr Molloy made requests for the Revocation Opponent to sell the trade mark to the Revocation Applicant.

The steps taken by Mr Molloy, whilst still a director of the Revocation Opponent pointed towards ‘use’ of the trade mark. However, the evidence indicated to the Assistant Commissioner that Mr Molloy’s actions during that period were not towards use of the trade mark by the Revocation Opponent, but by the Revocation Applicant:

The most logical explanation of all of the evidence is that Mr Molloy was working to assist his sister (in her personal capacity, since she had not yet incorporated a company) to open a FOKKER BROS restaurant.

Finally, the Assistant Commissioner considered whether the use by the Removal Applicant was, in fact, use authorised by the Removal Opponent. On this point, in short, the Removal Applicant did not file sufficient evidence to allow a determination to be made as to whether there was any authorised use.

Overall, it was found, based on the evidence filed, that there was use of the trade mark only in relation to ‘gravy’ and ‘beer’.

Despite there being no ‘use’ of the trade mark in connection with most of the goods and services covered, the Assistant Commissioner was satisfied that the non-use of the trade mark was a result of special circumstances beyond the control of the Removal Opponent and, as such, the application for revocation was refused.

In coming to that decision the Assistant Commissioner noted that the actions of Mr Molloy, whilst still a director of the Removal Opponent not only acted contrary to the ambitions of the Removal Opponent, but also actively assisted a third party to achieve those same aims.

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