The importance of accurate pleadings: Barilla’s opposition to the BARILLA DUMPLING trade mark in NZ

New Zealand Intellectual Property Office- Trade Marks [2024] NZIPOTM 31 (06 August 2024)

Barilla G. e R. Fratelli- Societa per Azioni (”Barilla Group”), owner of the famous BARILLA brand, unsuccessfully opposed an application to register the words “Barilla Dumpling” as a trade mark in respect of “Asian-style restaurant services” in New Zealand.  This case demonstrates the necessity of accurate pleadings in trade mark opposition and revocation proceedings in New Zealand.

Background

The Applicants, the Shaos, applied in August 2016 to register the mark BARILLA DUMPLING for Asian-style restaurant services.  During examination, Barilla Group’s registration for CASA BARILLA was cited as an objection with the applicants overcoming the objection by relying on honest concurrent use and the application was accepted on that basis.  On 20 April 2018, Barilla Group opposed the BARILLA DUMPLING application based on several registrations for marks being or including the word BARILLA.

Key Issues:

1. Oppositions based on prior marks

The New Zealand trade mark opposition system requires the Assistant Commissioner to consider the status of the Opponent’s marks at the filing date of the opposed application and at the time the opposed application would proceed to registration (ie at the date of the hearing): International Consolidated Business Proprietary Limited v SC Johnson & Son Incorporated [2020] NZSC 110 (ZIPLOC).  Following ZIPLOC, the usual practice is to request that the effective date of revocation for non-use of a blocking mark be backdated to a date before the filing date of the opposed application.  This eliminates the blocking mark’s existence at the relevant time being the filing of the blocked application.

In this case, the Opponent’s partially-revoked marks had to be considered with their original, unrevoked specifications for the purposes of the opposition.  The Assistant Commissioner was bound by the Supreme Court’s interpretation in ZIPLOC of the Trade Marks Act 2002, requiring consideration to be given to the state of the registry at the time opposed application was filed.  The Applicants had been successful in partially revoking three of the opponent’s registrations for non-use, but only as of various dates after the filing date of the BARILLA DUMPLING application.  In addition, it was not possible to backdate revocation of the Opponent’s marks to before their application date because that date was less than the minimum three-year non-use period from the date of actual registration.  (The Applicants were also probably unaware of the need to backdate, given that ZIPLOC had not yet been determined at the time of the revocation applications.)

2. Similarity of the marks and the likelihood of confusion (s25(1)(b)

25(1)(b) of the Trade Marks Act 2002 prohibits the Commissioner from registering a trade mark if it is similar to a prior trade mark and covers similar goods/services as the prior mark, and use is likely to deceive or cause confusion.

Barilla Group pressed several marks under this ground including BARILLA CENTRE FOR FOOD & NUTRITION in Classes 35, 41 and 42, BARILLA and in Class 30 and CASA BARILLA in Classes 29, 30, 41 and 43.  Of these marks, only the CASA BARILLA mark was held to cover relevant goods and services but, at the time of the hearing, the mark had been partially revoked for non-use and only covered “entertainment namely wine and food tasting” services in Class 41.  The Applicants’ Asian-style restaurant services were held to be similar to Barilla Group’s wine and food tasting services, the marks were held to be similar for the purpose of section 25, and the Assistant Commissioner found that there was a likelihood of confusion at the filing date of the opposed application due to the broader range of goods and services (even if the likelihood of confusion had subsided by the time of the hearing).

3. Well-known prior marks (section 25(1)(c))

Barilla Group also opposed the BARILLA DUMPLINGS application on the basis that the BARILLA and  trade marks were well known in New Zealand at the filing date of the opposed application.  Surprisingly (to the Pearce IP trade mark team who love a heaping bowl of BARILLA pasta), the Assistant Commission rejected this ground of opposition, finding that the evidence submitted was not sufficient to establish that the Opponent’s BARILLA marks were well-known in New Zealand.

4. Defences to section 25

Section 26 of the NZ Trade Marks Act allows trade mark applicants to overcome objections, including oppositions, raised under section 25 if the applicant(s) can show either honest concurrent use of the applied-for mark or that special circumstances exist that merit the applied-for mark being allowed to proceed to registration (such as prior use).

The Applicants did not plead section 26 as a defence in their counterstatement to the opposition even though the Applicants had argued special circumstances at examination and the opposed application had been accepted on the basis of honest concurrent use.  The Assistant Commissioner found that the failure to plead section 26 in the counterstatement meant that it would be unfair to Barilla Group to rely on prior use alone to establish special circumstances under section 26.

However, the Assistant Commissioner held that special circumstances did, in fact, exist given that:

1. There was no confusion or actual confusion despite a long period of concurrent use (since June 2010) so the impact on the public was likely to be minimal;

2. Barilla Group’s use of its BARILLA marks (and any resulting goodwill) is strongly associated with Italian cuisine whereas the Applicants’ mark was specifically limited to Asian-style restaurants so any damage to Barilla Group’s goodwill seemed unlikely;
3. There was honest concurrent use for at least a three year period between 2013 and 2016;
4. It was impossible for the Applicants to ask for revocation of Barilla Group’s marks to take effect from before the filing date of their application; and
5. Even taking into account the partial revocations which were backdated to July 2022, the parties’ marks had coexisted without confusion for almost six years.

As a result, the Applicants succeeded in obtaining registration of the BARILLA DUMPLING mark for Asian-style restaurant services based on special circumstances.

Implications

It is still possible to obtain registration of a trade mark in New Zealand, based on special circumstances, when:

1. the application is blocked by an earlier-registered mark; and
2. the blocking mark is revoked for non-use; but
3. the revocation is not (or could not be) backdated to before the application date of the blocked mark.

Best practice remains to ensure that revocations of potentially blocking marks are backdated, where possible, to before the filing date of the blocked application.

To establish that a trade mark is well-known in New Zealand requires carefully prepared, cogent evidence. Evidence of fame in another country, or general evidence of sales and promotion in New Zealand, is unlikely to be enough on its own.

About Pearce IP

Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the life sciences industries (in particular, pharmaceutical, biopharmaceutical, biotech, ag-tech and food tech).  Pearce IP is the 2021 ‘Intellectual Property Team of the Year’ (Lawyers Weekly Australian Law Awards) and was shortlisted for the same award in 2022.  Pearce IP is ranked in IAM Patent 1000 and Managing IP (MIP) IP Stars, in Australasian Lawyer 5 Star Awards as a ‘5 Star’ firm, and the Legal 500 APAC Guide for Intellectual Property.

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