Build-a-Bear Workshop – Premature Rejection

Wednesday 23rd April 2008

Build-A-Bear Workshop, Inc. applied for a trade mark for the three dimensional shape of a heart in classes 28 and 35 in relation to, inter alia, toys and dolls and retail of such items.

The Intellectual Property Office of New Zealand rejected the application on the basis that it has no distinctive character. Build-A-Bear Workshop, Inc. did not submit any evidence of use and relied on the inherent distinctive of the shape.

The application then went before a Hearing Officer who reached the same conclusion as the Intellectual Property Office of New Zealand.

Build-A-Bear Workshop, Inc. appealed to the High Court claiming that the Intellectual Property Office of New Zealand had rejected the application prematurely. The applicant claimed that if there was any risk of legitimate use by other traders such traders could have opposed the application.

Before the High Court Build-A-Bear Workshop, Inc. accepted that there was nothing in its shape or description to limit its size, colour, material or use.

The High Court looked at the scheme of the Trade Marks Act 2002 and noted:

  • The Commissioner of Trade Marks must examine trade mark applications
  • If the Commissioner thinks an application does not comply he or she must give the applicant an opportunity to respond or amend the application
  • If the Commissioner remains of the same view he or she must tell the applicant
  • The applicant must be given the opportunity of a hearing and can submit evidence
  • If the Commissioner is still not satisfied then he or she must reject the application

Taking into account the statutory scheme the High Court said that the Commissioner has a duty to consider an application, whether or not anyone opposes an application. The grant of a trade mark registration is the grant of a statutory monopoly and there is a public interest factor. The Commissioner has to satisfy him or herself that the application meets the criteria of the Act or is bound to reject an application. The High Court made it clear that the onus is on the applicant to satisfy the Commissioner.

The High Court found that the Hearings Officer’s view that the shape is capable of being used as a toy or part of a toy “seems unassailable”. The evidence was that other traders were using heart shapes in relation to toys. The High Court found the Hearings Officer’s conclusion that other traders are likely to want to use the mark “almost inevitable”.

This decision indicates the importance that the legislation places on the examination process by the Intellectual Property Office.

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