Antler Farms NZ Ltd v Braithwaite Holdings Ltd [2018] NZDNC 1267

[2018] - NZDNC - 1267
Transferred ; Complainant's Rights ; Unfair Registration - Transferred

The complainant is in the business of selling New Zealand-manufactured health products and had registered the mark ANTLER FARMS in the US. The respondent is in the same line of business and also sold deer antler products. The complainant's director, Lee, is a past associate of Ms. Carline, the administrative and technical contact for the respondent and there had been misgivings between the two parties. The complainant claimed that the respondent did not have a material claim to the name ANTLER FARMS.

The complainant does not have registered or reputational rights in ANTLER FARMS. The complainant has another form of right by way of an exclusive license in using an overseas mark.

The registration is unfair as it is a blocking registration which was inferred from the history between the parties and the lack of use of the domain name. While the mark is not registered or does not have a reputation in the name in NZ, the expert held that the complainant does have rights in the name because of an exclusive license to use the US trade mark. The exclusive license is different from just having a trade mark overseas. An exclusive license gives the entity more rights than a trade mark registration overseas, since it conveys a degree of exclusivity locally, almost like a registered trade mark would.

Link to NZLII Decision

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