Handler and Burrell, ‘Zombie marks invade New Zealand! How scared should the rest of the world be?’

ABSTRACT
It would be natural to suppose that once a trade mark has been expunged from the trade marks register it would cease to have legal force or effect. For many years this was indeed the position in British Commonwealth countries. However, the New Zealand Supreme Court has recently held that a trade mark whose registration has been revoked can still block a subsequent application for registration in certain circumstances. In so doing the New Zealand Supreme Court followed an earlier decision of the Singapore Court of Appeal that was to much the same effect. This article argues that these decisions are problematic on policy grounds and rest on faulty doctrinal premises. It is important to recognise these issues now, not least because there is a danger that this approach may spread to other jurisdictions, including the EU, Hong Kong, and the UK.

Michael Handler and Robert Burrell, Zombie marks invade New Zealand! How scared should the rest of the world be?, Oxford University Commonwealth Law Journal. Received 27 July 2021, accepted 10 August 2021, published online: 20 October 2021.

First posted 2021-10-21 09:00:58

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