Thank you to
Chris Torrero for sending us a link to this story! As many of you may know, in
the UK, Red Nose Day is an annual telethon organised by Comic Relief to raise
money for charity. Some people wear the red nose as a sign of their support of
the charity. Similar initiatives take place in other parts of the world.
The National
Sids Council of Australia is an Australian charity which holds the registered
trademark Red Nose Day in Australia. In 2010, it applied to the Intellectual
Property Office of New Zealand (IPONZ) to revoke the Red Nose Day trademarks of
Cure Kids, relying on continuous prolonged non-use of the mark. It also
explained that having two separate charities in the Australasian region using
the trade mark Red Nose Day would confuse the public. In 2011, the IPONZ ruled
that Cure Kids had lost the right to use the image and Red Nose Day marks. Cure
Kids has now decided to appeal this decision.
During the
appeal, counsel for Cure Kids, Julian Miles QC, argued that the New Zealand
public associated Red Nose Day with their charity and believed it to be a New
Zealand campaign. The National Sids Council of Australia, on the other hand,
argued that the marks hadn’t been used in New Zealand since Red Nose Day was stopped
in 1998. Clive Elliott QC explained: “It all comes down to whether there was
fixed and present intention to use the mark.”
Mr Miles argued
that the trade marks were not used because of ‘special circumstances’, but that
public interest had prompted Cure Kids to launch the Red Nose campaign again in
2010. Cure Kids say that during the last three years of non-use, they were
preparing to relaunch Red Nose Day.
In the UK,
non-use of a trade mark for an uninterrupted 5 years, without any proper
reason, allows anyone to apply to have the trade mark revoked. S.66 of the NewZealand Trade Marks Act 2002 allows for a similar revocation after a period of
3 years only. S.66(2) of the Act specifies that revocation will not take place
if there were special circumstances outside the control of the owner of the
trade mark, which stopped him from making use of this mark. In order to
successfully appeal against the non-use, Cure Kids will have to show that there
were special circumstances stopping them from using the trade mark for such a
prolonged amount of time (13 years).
The hearing is
set to continue later this year, before Justice Simon Moore.
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Another sad chapter in the book "The Cases that Never Should Have Made it to Court".
ReplyDeleteThey only reactivated it becasue the SIDS parents applied to use it.
ReplyDeleteThis is so stupid. New Zealand has never had anything to do with this charity so saying there would be confusion is bull
ReplyDeleteWas anything further ever known ? Any help on "special circumstances" in context of non-use of a registered trade mark ?
ReplyDelete