Zombie marks redux: is Australia safe from the New Zealand variant?
In International Consolidated Business Pty Ltd v SC Johnson & Son Inc, the New Zealand Supreme Court interpreted the New Zealand trade mark statute in a manner that leaves open the possibility of unused marks whose registrations have been revoked turning into ‘zombies’ and blocking the registrat...
| Main Authors: | , |
|---|---|
| Format: | Journal article |
| Language: | English |
| Published: |
Thomson Reuters
2022
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| _version_ | 1797107832912347136 |
|---|---|
| author | Burrell, R Handler, M |
| author_facet | Burrell, R Handler, M |
| author_sort | Burrell, R |
| collection | OXFORD |
| description | In International Consolidated Business Pty Ltd v SC Johnson & Son Inc, the New Zealand
Supreme Court interpreted the New Zealand trade mark statute in a manner that leaves open
the possibility of unused marks whose registrations have been revoked turning into ‘zombies’
and blocking the registration of later, similar marks. In this article we explore the implications
of this decision for Australia. Specifically, we analyse the new normative justification for
recognising zombie marks put forward by the Supreme Court, and its reinterpretation of the
old British case on which the current Australian approach rests. We argue that both the
justification and the reinterpretation are unconvincing and ought not to be followed in
Australia. We also show that the Supreme Court’s decision rests on a misunderstanding of a
provision of the New Zealand statute that allows for orders for the removal of a mark to be
‘backdated’ to an earlier point in time, and suggest that while the introduction of such a
provision into Australian law would be beneficial, it should not be interpreted in such a manner
that would open the door to zombie marks. |
| first_indexed | 2024-03-07T07:21:13Z |
| format | Journal article |
| id | oxford-uuid:58972434-0305-4c0c-8bb0-41211ea65493 |
| institution | University of Oxford |
| language | English |
| last_indexed | 2024-03-07T07:21:13Z |
| publishDate | 2022 |
| publisher | Thomson Reuters |
| record_format | dspace |
| spelling | oxford-uuid:58972434-0305-4c0c-8bb0-41211ea654932022-10-17T07:52:17ZZombie marks redux: is Australia safe from the New Zealand variant?Journal articlehttp://purl.org/coar/resource_type/c_dcae04bcuuid:58972434-0305-4c0c-8bb0-41211ea65493EnglishSymplectic ElementsThomson Reuters2022Burrell, RHandler, MIn International Consolidated Business Pty Ltd v SC Johnson & Son Inc, the New Zealand Supreme Court interpreted the New Zealand trade mark statute in a manner that leaves open the possibility of unused marks whose registrations have been revoked turning into ‘zombies’ and blocking the registration of later, similar marks. In this article we explore the implications of this decision for Australia. Specifically, we analyse the new normative justification for recognising zombie marks put forward by the Supreme Court, and its reinterpretation of the old British case on which the current Australian approach rests. We argue that both the justification and the reinterpretation are unconvincing and ought not to be followed in Australia. We also show that the Supreme Court’s decision rests on a misunderstanding of a provision of the New Zealand statute that allows for orders for the removal of a mark to be ‘backdated’ to an earlier point in time, and suggest that while the introduction of such a provision into Australian law would be beneficial, it should not be interpreted in such a manner that would open the door to zombie marks. |
| spellingShingle | Burrell, R Handler, M Zombie marks redux: is Australia safe from the New Zealand variant? |
| title | Zombie marks redux: is Australia safe from the New Zealand variant? |
| title_full | Zombie marks redux: is Australia safe from the New Zealand variant? |
| title_fullStr | Zombie marks redux: is Australia safe from the New Zealand variant? |
| title_full_unstemmed | Zombie marks redux: is Australia safe from the New Zealand variant? |
| title_short | Zombie marks redux: is Australia safe from the New Zealand variant? |
| title_sort | zombie marks redux is australia safe from the new zealand variant |
| work_keys_str_mv | AT burrellr zombiemarksreduxisaustraliasafefromthenewzealandvariant AT handlerm zombiemarksreduxisaustraliasafefromthenewzealandvariant |