Gold Real Estate Group Limited v Gold Leaf Real Estate Limited & Anor

High Court, Christchurch, Fogarty J, 9 February 2006

This case concerned an application for interim injunction in proceedings for trade mark infringement, passing off and breach of s9 of the Fair Trading Act. The applicant was the registered proprietor of the trade mark GOLD LEAF REAL ESTATE GROUP LIMITED and sought to restrain the defendants from using the word “Gold” in relation to real estate services. 

The case is noted for the approach taken by the Court on the extent to which the plaintiff could rely on s162 of the Trade Marks Act 2002 to establish that it had a serious question to be tried in respect of its cause of action for trade mark infringement. 

S162 provides:

“162. Registration is prima facie evidence of validity

In all legal proceedings that relate a registered trade mark the fact that a person is registered as owner of the trade mark is prima facie evidence of the validity of the original registration of the trade mark and of all later assignments and transmissions.”

One of the arguments advanced by the plaintiff in support of its application for interim injunction was that s162 applied so that the Court hearing the interlocutory application had to proceed on the basis that the fact that the plaintiff was registered as owner of the mark was prima facie evidence of the validity of the original registration of the mark. Insofar as the current validity of the mark was relevant, the Court accepted the submission. However, Fogarty J held that it was not appropriate to apply the serious question criteria on the basis of prima facie validity relying on s162 because the analysis required at the interim injunction stage was a forward looking one of the plaintiff’s likely position at trial. 

It was therefore wrong to assume at the interlocutory stage that the mark would be found to be validly registered at trial. As such, on the facts, it was likely, if not inevitable, that one or both of the defendants would apply for a declaration from the Court pursuant to s73(1) Trade Marks Act 2002 that the plaintiff’s trade mark was invalid in terms of s18(1)(b) on the basis that it had no distinctive character. Fogarty J then went on to express the view that the plaintiff would have considerable difficulty upholding the validity of registration on s18(1) grounds but concluded that the plaintiff might have a serious question that its registered mark had become distinctive through use for the purposes of s73(2).

On the facts, the Court refused the interim injunction, concluding that the balance of convenience and overall justice of the case favoured the defendants.