Convention Priority or Registrability First?

On 27 October 2005 Unilever applied for DOVE SUMMER GLOW in class 3.

On 6 December 2005 Neutrogena applied for SUMMER GLOW and claimed convention priority from a United States application dated 21 August 2005.

The Unilever application was accepted by the Intellectual Property Office of New Zealand but acceptance was subsequently revoked when the Neutrogena mark was filed, as provided for under section 42 of the Trade Marks Act 2002 which provides that the Commissioner may revoke acceptance if another application has priority. Unilever requested a hearing.

At the hearing Unilever argued that Neutrogena’s application was not distinctive and would never reach acceptance or registration and for that reason Unilever’s acceptance should not have been revoked. The Hearings Officer ruled that the scheme of the legislation required the priority of trade marks to be dealt with before registrability. Unilever appealed to the High Court claiming that the Hearings Officer should have considered the registrability of Neutrogena’s mark and had not done so. Neutrogena acted as an intervener to the appeal.

Unilever presented two arguments to the High Court.

The first argument was that considering priority before registrability will result in unnecessary expense because Neutrogena’s mark is not registrable and would not survive initial consideration by the Intellectual Property Office. The High Court dismissed this argument stating that it failed to see any significant difference. In one scenario Unilever’s mark could be accepted first and then opposed and in the other Neutrogena’s mark could be accepted and then opposed.

The second argument relied on Re Carter Medicine Cos Trade Marks (1892) 3 Ch. D. 472 as authority for the point that the discretion to revoke acceptance should only be exercised if the earlier mark is registrable.

In Carter Medicine counsel for Carter Medicine argued that the British legislation was to be interpreted as meaning that its application in the United States to register the word “PILLS” meant that it was entitled to have the word registered in Britain. In Carter Medicine North J rejected the argument that the fact of an application in the United States automatically meant that the application was entitled to registration in Britain. The High Court ruled Carter Medicine not to be authority for the point that registrability must be considered before priority.

The High Court agreed with the Assistant Commissioner that the scheme of the legislation dictates that priority must be dealt with before registrability. We now wait to see how the Intellectual Property Office deals with the Neutrogena application and subsequently with the Unilever application.