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

In this case, the Opponent, Ye Guofu, opposed registration of Guangdong Puss Investment Co., Ltd's (Puss) application to register the stylised trade mark 1114170a.jpg. Ye Guofu filed a single declaration in support of its opposition and Puss did not to file any evidence at all. Neither party requested a hearing or lodged any written submissions.

The Assistant Commissioner of Trade Marks, Virginia Nichols, deemed the Opponent's declaration evidence to be entirely inadmissible, as it was not witnessed by anyone, let alone someone who is authorised to witness a declaration in China.

Ordinarily, in the absence of any admissible evidence from the Opponent, the Applicant would be pretty optimistic about its chances of defeating the trade mark opposition. However, one of the Opponent's grounds was that the Opponent owned copyright in artwork identical to the Opposed NO ME logo. In its defence, the Applicant claimed in its counterstatement that it had ownership in the relevant copyright from an earlier date.

Copyright ground Loses. And Wins.

The Opponent's opposition claim that registration of the NO ME logo is contrary to law by infringing the Opponent's copyright failed, as there was no way of verifying either party's claim to copyright ownership.

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

Copyright as a basis for ownership

Ye Guofu argued that Puss was not the true owner of the Opposed NO ME logo as Puss did not own the relevant copyright. Although the Assistant Commissioner dismissed the Opponent's copyright claim, it reappeared in the context of ownership as the evidentiary burden to demonstrate ownership fell upon the Applicant. Specifically, the Opponent had done enough to put Puss on notice that its claim to ownership had been questioned. The Assistant Commissioner held that Puss' assertion of ownership in its counterstatement was insufficient (in the absence of supporting evidence). This led to a win for Ye Guofu by establishing successfully that the Applicant Puss was not the owner of the Opposed Mark.

Where to from here?

This case seemed to be a race to the bottom, to see just how little input either party could get away with in this trade mark opposition. If the Applicant had appropriate legal representation then there is a high chance that the outcome would have been very different.

Puss gets bitten – again!

In a weird turn of events, Puss got to relive the experience outlined above all over again in a related opposition – Guangdong Puss Investment Co., Ltd v Guangzhou Renren Management Consulting Co., Ltd [2021] NZIPOTM 18 (19 August 2021).

This case was almost a mirror image of the decision above, except in this case, the Opponent's evidence (an affidavit by Zheng Mingyong) was considered valid. Nonetheless, despite providing evidence of copyright in "works" which were very similar to the NO ME logo, the Opponent still failed to establish that Puss had copied the Opponent's trade marks. 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 authorised link between the Opponent's devices and the Applicant, there are simply too many possible explanations for how the Applicant came to adopt [the Opposed Mark]."

Nonetheless, as with the aforementioned case, the Opponent's ownership challenge once again put Puss on notice that it needed to prove it had a substantiative proprietary right. However, as Puss failed to lodge any evidence (again!), the Opponent again established a valid proprietorship ground to oppose registration of the trade mark.

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

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