Opponent wins New Zealand trademark opposition – despite inadmissible evidence – Trademark

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Sailun Group Co., Ltd (Sailun) successfully opposed the registration of Wiefang Hadong Rubber Co., Ltd’s (Wiefang) New Zealand Trademark Application in class 12. The case is a good warning to foreign opponents, because all of Sailun’s evidence was ruled inadmissible. Luckily for Sailun, he had an earlier New Zealand trademark registration to rely on, which was instrumental in his eventual victory over the opposition.

Why was Sailun’s testimony inadmissible?

Opponent Sailun filed a notarized affidavit signed by its Vice-President. However, the notarial certification did not explain on what authority the witness claimed to witness the affidavit. The certification also only concerned the authenticity of the Vice President’s signature, rather than certifying the truthfulness of the contents of the affidavit. Further, the exhibits did not match their description in the affidavit and the exhibits themselves were not seen.

IPONZ has advised counsel for the Opponent of this defect. However, the warning was met with a simple statement that the affidavit “has been certified in accordance with relevant practice in China“.

Here we go again (!!) – There is a high bar of proof in New Zealand

Many Aotearoa New Zealand trademark oppositions are lost as evidence from opponents is refused, due to Aotearoa New Zealand’s strict evidentiary requirements. And it almost was in this case too.

Here, the Opponent had to establish that the witness to the relevant Affidavit was a “Commonwealth official” within the meaning of the Oaths and Declarations Act 1957. As the Opponent failed to meet this requirement, its evidence was ruled inadmissible.

How did the opponent win a New Zealand opposition, without any evidence?

Ordinarily, the inadmissibility of all of the opponent’s evidence would be “case closed”, resulting in victory for the plaintiff. Certainly, in this case, all of the evidentiary grounds for opposition were rejected – in particular, the Assistant Commissioner rejected claims that use of the opposing mark was likely to mislead or confuse.1, was against the law2 and that the request was made in bad faith3 .

However the Adversary Sailun had the chance to have one last card to play. More specifically, its registration for the mark 1203908b.jpg referred to goods which were identical or very similar to those covered by the opposing request. As such, Sailun could still win the opposition if the Deputy Commissioner finds the respective marks to be similar.4 .

East 1203908b.jpg similar to 1203908a.jpg?

The Assistant Commissioner concluded that the respective marks are indeed “like” (and not “deceptively similar“; we are in New Zealand, not Australia after all).

Some might find this interesting because the Opponent’s mark may appear as SAI-LUN, while the opposing mark is a combination of two common English words (“SAIL” and “WIN”). Nevertheless, the Assistant Commissioner concluded that there was a high degree of similarity to the marks and the opponent therefore won the opposition, solely on the basis of the earlier registration of its New Zealand trade mark.

A warning for foreign parties (and their lawyers) in New Zealand opposition proceedings

This warning is one that keeps coming back in New Zealand trademark opposition proceedings. Specifically, many New Zealand trademark oppositions are lost because the evidence is ruled inadmissible. This is another case to add to this list and a warning to Australian and New Zealand intellectual property lawyers – especially those who think they can use the same evidence that may be acceptable in Australia .

Footnotes

1. Section 17(1)(a) of the Trade Marks Act 2002 (Law)

2. Section 17(1)(b) of the Act

3. Section 17(2) of the Act

4. Section 25(1)(b) of the Act

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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