Zombie Marks? Ceased Registrations, Failed Applications and Citation Objections Under Section 44 of the Trade Marks Act

An applicant for registration of a trade mark facing an objection under s 44 of the Trade Marks Act 1995 (Cth) based on the existence of a conflicting earlier mark has a number of options available to it in order to overcome such an objection. One such option is to bring proceedings to have the conflicting mark removed from the Register on the grounds of non-use. If the non-use proceedings are successful, the Trade Marks Office’s longstanding practice has been to consider that the objection no longer exists and to accept the applicant’s application or, if s 44 is being raised as an opposition ground, to allow it to proceed to registration. The outcome of litigation between Chia Khim Lee Food Industries Pte Ltd and Red Bull GmbH currently working its way through the Federal Court has the potential to disrupt the above practice. One of the issues the Court will confront at trial is whether a mark that has been removed from the Register on the grounds of non-use, and whose registration has therefore ceased, nonetheless remains a conflicting mark for the purposes of s 44 if it was on the Register at the applicant’s priority date. In interlocutory proceedings between the parties, the Court has suggested that there are ‘clear, unqualified and authoritative general statements’ that support this interpretation. In this article we argue that this interpretation of s 44 should be rejected, and that the Office’s current practice is consistent with the Act and case law, and represents sound policy. In doing so we seek to show that the alternative interpretation has consequences that go well beyond those immediately at issue in the case. It would mean that marks whose registrations have ceased, or applications that have lapsed or been rejected, after a later applicant’s filing date would also need to be considered as ‘earlier’ marks for the purposes of s 44. This would lead to absurd results and would significantly disadvantage applicants, with the corresponding benefits unjustifiably flowing to parties whose registrations have ceased or whose applications never progressed to registration. We also argue that while a specific amendment to the Act might be thought desirable to deal with the particular issue raised in the litigation, we believe that this would need to be thought through carefully. We conclude by suggesting that if legislative intervention is to occur a better approach would be for Parliament to clarify a number of larger, more fundamental issues with the Act, such as the effect of ‘cessation’ of registration generally, and the relevant date at which various grounds of rejection and opposition ought to be assessed by tribunals