The Death of “Zombie” Marks

21 June, 2017 By Ian Drew and Nicholas Butera

This article first appeared in the INTA Bulletin dated 15 May 2017, Vol 72 No.9

A decision from the Australian Trade Marks Office in 1872 Holdings VOF v. Havana Club Holding SA [Feb. 21, 2017] ATMO 12 provides guidance on both the treatment of “zombie” marks and the binding nature of the Statement of Grounds and Particulars (SGP) in oppositions.

The Issues

In Australia, a zombie trademark is a mark which was pending or registered at the time a later application is filed, but is removed from the register before the outcome of the later application is determined. In theory, a zombie mark may still block a later conflicting application, as the mark was alive at the date on which the dispute is determined. Additionally, since the “Raising the Bar” reforms in April 2013, opponents have been required to file an SGP setting out the grounds and supporting particulars for the opposition. As the grounds of their particulars often become apparent once evidence has been lodged, there has been a degree of uncertainty as to whether an opponent is bound by the grounds as particularized.

The Opposition

The applicant, Havana Club Holding SA (Havana Club), sought extension of protection of its mark HAVANA CLUB ESSENCE OF CUBA to Australia with respect to a range of goods and services, including alcoholic beverages in Class 33.

The opponent, 1872 Holdings VOF (1872 Holdings), opposed registration on a number of grounds, including:

•     S44 of Trade Marks Act — 1872 Holdings asserted that its earlier refused application for MATUSALEM EL ESPIRITU DE CUBA (the zombie mark) should prevent registration of the opposed mark. Although pending at the filing date of the opposed mark, it had been refused registration when opposed for containing a false geographical indication. Havana Club Holding SA and Corporacion Cuba Ron S.A. v. 1872 Holdings VOF [2016] ATMO 37.
•     S42 of Trade Marks Act — 1872 Holdings asserted that use of the opposed mark would mislead or deceive in breach of the Australian Consumer Law in light of its earlier reputation in the marks THE SPIRIT OF CUBA LIBRE, EL ESPIRITU DE CUBA, and EL ESPIRITU DE CUBA LIBRE; however, at the hearing, 1872 Holdings also asserted that the mark would be misleading or deceptive if the relevant goods did not originate from Cuba, which was not particularized in its SGP.

Did the Zombie Mark Rise from the Dead?

The delegate of the Registrar of Trade Marks refused to reject the application based on the zombie mark. Even though the ground of opposition is determined by reference to the filing date of the application, the delegate noted that there was a number of provisions in the Act and accompanying regulations (particularly those in relation to deferments and amendments) which would be “rendered otiose” if circumstances arising after the filing date were considered irrelevant. The delegate observed that the “present tense” wording of Section 44, led the delegate to conclude that the Act should be “applied having regard to the status of potentially conflicting marks at the time of the assessment.”

Was 1872 Holdings Bound by the SGP?

The delegate gave this issue short and definitive shrift, stating:

[t]his was not a ground detailed in the Opponent’s Statement of Grounds and Particulars; nor was there an application from the Opponent to amend its Statement of Grounds and Particulars. Accordingly, that is the end of the matter.

The decision confirms the Trade Marks Office’s view on zombie marks and the need to adequately particularize grounds of opposition. Attorneys should ensure that earlier rights relied upon in opposition proceedings are maintained, and if circumstances enliven other grounds of opposition, their SGP should be amended immediately.