What happens when a third party files a trade mark application for your unregistered trade mark?
The usual course of action is to oppose the trade mark application on the grounds that the applicant is not entitled to be the owner of the mark and that use of the mark would be likely to deceive or cause confusion.
However, opposition proceedings can be costly and time-consuming, and are not always an attractive option for individuals, small businesses and non-profit organisations.
The recent decision by the Intellectual Property Office of New Zealand (IPONZ) concerning trade mark application 1072697 (the LOVE SOUP decision) illustrates what other options may be available to parties.[i]
The LOVE SOUP decision
The New Zealand charity Love Soup, founded by Julie King, provides food to people in need and operates under the unregistered LOVE SOUP logo trade mark:
In July 2017, Mia Nathan-Joyce, a third party, filed an application with IPONZ to register the LOVE SOUP logo as a trade mark covering ‘charitable fundraising services’ in class 36 (the third party application).
Julie King became aware of the third party application, and in November 2017 filed a new trade mark application for the LOVE SOUP logo. Together with the application, King submitted a statutory declaration and exhibits confirming she was the copyright owner of the trade mark.
IPONZ asked Nathan-Joyce to confirm she was the copyright owner of the trade mark in the third party application, but as the information she provided did not establish copyright ownership, IPONZ issued a notice of intention to reject the application.
At the verbal hearing that followed, the Commissioner held that Nathan-Joyce had not established copyright ownership of the trade mark, and had thus not discharged the onus of establishing, on a balance of probabilities, that the registration of LOVE SOUP stylised & logo would not be contrary to law. The third party application was therefore refused.
It is rare for a copyright objection to be raised at the trade mark examination stage. However, if an examiner is doubtful that the applicant owns the copyright in a trade mark, the applicant should be asked to clarify the issue.
In Build a Bear Workshop Inc, Miller J confirmed the onus is on the applicant to convince the Commissioner the trade mark complies with the requirements of the Act.[ii] Therefore, if the examiner has cause to doubt that the applicant owns the copyright in a trade mark, and the applicant is not able to satisfy IPONZ it is the copyright owner, IPONZ will have grounds to refuse the application.
So, what happens when a third party files a trade mark application for your unregistered trade mark?
The LOVE SOUP decision indicates that a strategic option may be to file a new trade mark application for your trade mark, together with a statutory declaration establishing copyright ownership. The onus will then be on the third party applicant to convince IPONZ it is the copyright owner.
If the third party is not able to establish copyright ownership, it is possible that its application will be refused and your later filed application will proceed to acceptance. If the third party application does make it past the examination stage and the application is accepted, there would still be the opportunity to oppose the trade mark on copyright grounds.
The LOVE SOUP decision is an interesting example of the interplay between copyright and trade mark law, and serves as a reminder that copyright ownership can have a powerful influence on the trade mark registration process.
This article was first published by Managing IP on 9 June 2020. Kathleen Henning is Managing IP’s international correspondent for New Zealand.