Zombie marks redux: is Australia safe from the New Zealand variant?

Journal article

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New Zealand trade mark statute in a manner that leaves open the possibility of unused marks whose registrations have been revoked turning into ‘zombies’ and blocking the registration of later, similar marks.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.

Authors: Burrell, R; Handler, M

• Publication status: Published
• Peer review status: Peer reviewed
• Publisher: Thomson Reuters
• Journal: Australian Intellectual Property Journal
• Volume: 33
• Issue: 1
• Pages: 19-33
• Publication date: 2022-09-01
• Acceptance date: 2022-06-17
• DOI: 10.3316/agispt.20221010075629
• ISSN: 1038-1635
• Language: English
• Keywords: FFR