Cussons (New Zealand) Pty Limited v Unilever Plc and others: PC 20 Nov 1997

(New Zealand) The defendants appealed against an interlocutory injunction restraining them from use of a trade mark which was said to be infringing. The mark had not been used and was vulnerable to being removed, and Cussons applied for the removal of the mark. Unilever had in the mean time registered the same mark again as an associated mark, and obtained the injunction. The court held that since New Zealand’s Trade Mark Act of 1953 did not prohibit more than one registration under the same mark, the use proposed by the defendants would necessarily be infringing.
Held: When re-enacted, the 1953 Act had included words intended to make it clear that there was no absolute prohibition on the registration of an identical mark in the name of the same proprietor. Nevertheless, the practice was to object to dual registration wherethere appeared to be no good reason for the second registration.
The provisions as to no- use for five years applied separately to each registration. The new registration therefore stood. Questions about the purpose of the new registration were not suitable to be answered in interlocutory proceedings.

Judges:

Lord Browne-Wilkinson, Lord Steyn, Lord Hoffmann, Lord Cooke of Thorndon, Lord Hutton

Citations:

[1998] AC 328, [1998] 2 WLR 95, [1998] RPC 369, [1997] UKPC 56

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

CitedGE Trade Mark HL 1973
A trade mark must be ‘distinctive’, it must be recognisable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered goodwill. Trade Marks . .
CitedKlissers Farmhouse Bakeries Ltd v Harvest Bakeries Ltd 1985
An interlocutory injunction should be granted to restrain behaviour where the plaintiff had a realistic prospect of success, and overall justice required one to be ganted. . .
CitedIn the matter of John Player and Sons’ Application for a Trade Mark 1900
The court considered a suituation where a company had applied to register its own trade mark again.
Held: Cozens-Hardy J said that a second registration of the identical mark by the same proprietor was superfluous and absurd. It would ‘cumber . .
CitedIn re Birmingham Small Arms Company’s Application 1907
The court was asked about the obligation to associate identical trade marks.
Held: Kekewich J said that the omission of any reference to identical marks was probably a mistake: ‘it is impossible to my mind to conceive that the Legislature can . .
CitedOrigins Natural Resources Inc v Origin Clothing Ltd 1995
Jacobs J considered the trade marks regulation of double registrations: ‘There is no provision of the Trade Marks Act 1938 which prevents the registration of a mark twice for the same goods by the same proprietor. There is no reason in public policy . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 June 2022; Ref: scu.159268