Copyright provides a basis for challenging trademark ownership in New Zealand – Intellectual Property

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A trade mark plaintiff learned the hard way, by
Guangdong Puss Investment Co., Ltd v Ye Guofu [2021]NZIPOTM 17 (August 19, 2021), that an applicant can still lose a trademark opposition in New Zealand even after IPONZ has rejected all of the opponent’s evidence.

In this case, the opponent, Ye Guofu, opposed the registration of Guangdong Puss Investment Co., Ltd (Cat) application for registration of the stylized mark . Ye Guofu filed a single statement in support of his opposition, and Puss filed no evidence. None of the parties requested a hearing or filed written submissions.

The Deputy Commissioner of Trade-marks, Virginia Nichols, ruled the evidence of the opponent’s statement entirely inadmissible, as it was not witnessed by anyone, let alone by a person authorized to testify to a statement in China.

Normally, in the absence of any admissible evidence from the Opponent, the Applicant would be quite optimistic about his chances of defeating the trade-mark opposition. However, one of the Opponent’s grounds was that the Opponent owned the copyright to artwork identical to the Opposed NO ME logo. In his defence, the plaintiff asserted in his counter statement that he owned the relevant copyright at an earlier date.

The ground of copyright loses. And win.

The Opponent’s opposition claims that the registration of the NO ME logo is against the law by infringing the Opponent’s copyright failed because there was no way to verify the ownership claim of the copyright of either party.

At this news, the plaintiff (Puss) would have been even more excited, especially since most of the remaining grounds for opposition had also failed. However, Copyright came back to bite Puss on the tail.

Copyright as the basis of ownership

Ye Guofu argued that Puss was not the real owner of the Opposed NO ME logo because Puss did not own the corresponding copyrights. Although the Assistant Commissioner rejected the Opponent’s copyright claim, it reappeared in the context of ownership since the burden of proof to demonstrate ownership was on the Applicant. Specifically, the Opponent had done enough to notify Puss that its ownership claim had been challenged. The Assistant Commissioner found Puss’ assertion of ownership in his counter statement to be insufficient (in the absence of supporting evidence). This led to a victory for Ye Guofu by successfully establishing that Petitioner Puss was not the owner of the Opposing Mark.

Where to go from here?

This case seemed like a race to the bottom, to see how well either side could fare in this trademark opposition. Had the plaintiff been represented by an appropriate attorney, chances are the outcome would have been very different.

The cat gets bitten – again!

In a strange turn of events, Puss was able to relive the experience described above in a related opposition –
Guangdong Puss Investment Co., Ltd v Guangzhou Renren Management Consulting Co., Ltd [2021] NZIPOTM 18 (August 19, 2021).

This case was almost a mirror image of the above decision, except that in this case the Opponent’s evidence (an affidavit of Zheng Mingyong) was held to be valid. Nevertheless, despite providing proof of copyright in “works” very similar to the NO ME logo, the Opponent has still failed to establish that Puss copied the Opponent’s trademarks . In the words of the same Assistant Commissioner, Virginia Nichols, “in the absence of a clear chain of circumstances from which I can infer an authorized connection between the Opponent’s arrangements and the Petitioner, there are simply too many possible explanations for how the Petitioner came to this to adopt [the Opposed
Mark].”

Nevertheless, as in the aforementioned case, the Opponent’s ownership challenge once again put Puss on notice that he had to prove that he had substantial ownership. However, since Puss has not filed any evidence (yet!), the opponent has again established a valid ground of ownership to oppose the registration of the mark.

Cats can have nine lives, but in this case Puss lost them all – twice.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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