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Manhaas Industries (2000) Ltd v Fresha Export Ltd

(CIV 2011-485-1255, 24th July 2012)

The respondent (Fresha) applied to revoke the appellant’s (Manhaas) registration for the trade mark OCEAN QUEEN in class 29 on the basis of non-use over a 3-year period. The application for revocation was granted by the Assistant Commissioner of Trade Marks following a hearing.

Mahaas appealed, claiming on the basis of section 66(2) of the Trade Marks Act 2002 that the non-use of the mark was due to special circumstances outside the control of the owner of the trade mark. In particular, it claimed that the non-use occurred due to its inability to source fish or fish that was up to standard for canning.

The appeal was dismissed. The non-use provisions of the Act are there to prevent the Trade Marks Register from becoming clogged up. The ‘special circumstances’ exception to the non-use provisions is accordingly to be construed narrowly. It was held that ‘special circumstances’ must be peculiar or abnormal and arise from external factors effectively outside the control of the owner. However, the ‘special circumstances’ did not need to make use of the trade mark impossible, but they did require that any use would be impractical from a business point of view. The onus of establishing ‘special circumstances’ rested with the owner, and assessment of compliance with these requirements would be very fact specific.
During the 3-year non-use period Manhaas had unsuccessfully attempted to obtain fish stock from a single South American supplier and only for a short period of time. Fresha and another company had no difficulty acquiring significant quantities of fish stock from South America during that period, and the fish stock was also available through mainstream outlets in New Zealand. Manhaas’s efforts to obtain fish stock from Thailand were similarly casual.

Consequently, the Court held that obtaining suitable fish stock was very much within Manhaas’s control and so had not established any ‘special circumstances’ for the non-use of the trade mark. The Court refused to exercise any discretion in preventing removal of the registration.