Zhengtao Jian v Pit Viper, LLC [2021] NZIPOTM 21 (23 August 2021)

Many New Zealand trade mark actions are lost due to poor or inadmissible evidence, which was demonstrated again in the recent New Zealand trade mark invalidity decision of Zhengtao Jian v Pit Viper, LLC [2021] NZIPOTM 21 (23 August 2021).

In this case, Pit Viper, LLC applied for a declaration of invalidity against Zhengtao Jian's (Jian) registration of the trade mark PIT VIPER. Jian did not even file a counterstatement to the invalidity action, which would ordinarily make a party such as Pit Viper very confident. However, not in New Zealand.

As Jian did not file a counterstatement, the Assistant Commissioner needed to consider the invalidity action based solely upon Pit Viper's evidence. All that Pit Viper needed to do was establish that it was an aggrieved person and that the trade mark registration for PIT VIPER was prima facie invalid. Pit Viper lodged a declaration of Christopher Garcin as its evidence in support of the invalidity action.

What was wrong with the Garcin Declaration?

When the Garcin declaration was first lodged, Pet Viper acknowledged that it was not executed in accordance with New Zealand requirements, and it was granted leave to amend its evidence.

The new Garcin declaration was witnessed by a Pilot with SkyWest Airlines (SW). However the New Zealand Oaths and Declarations Act 1957 states clearly that a declaration made outside a Commonwealth country "shall be made before a commonwealth representative, or before a judge, or before a notary public or New Zealand solicitor"1. The Assistant Commissioner cited numerous authorities to support this requirement, leading Assistant Commissioner Nichols to conclude that "it is not sufficient for a declaration to be taken by a person who may be authorised to do so locally – the person taking the declaration must fall within one of the aforementioned categories".

Is the Garcin declaration "an Affidavit"?

The Garcin declaration may have been able to slip in as evidence if it qualified as an "affidavit". However as the comments contained within the declaration were "declared" rather than sworn or affirmed, it did not qualify as an affidavit. Consequently, the Garcin declaration is neither a statutory declaration nor an affidavit and therefore the evidence was entirely inadmissible.

Could Pit Viper have fixed this?

Short answer "Yes".

Long answer – In order to rectify these problems, Pit Viper needed to satisfy the Assistant Commissioner that there were "genuine and exceptional circumstances which justified the filing of the evidence", or that the evidence could not have been filed earlier2.

Pit Viper sought this request but provided no explanations. Once again, and as happens so often in New Zealand proceedings, the relatively stringent but very clear rules which apply to New Zealand opposition proceedings were simply not followed.

The end result?

The Garcin declaration was inadmissible and thus the Assistant Commissioner needed to consider the case based solely upon the invalidity application, Pit Viper's submissions and publically available information.

One Win for Pit Viper – It is an "aggrieved person"

This Assistant Commissioner was prepared to note from the state of the New Zealand Trade Mark Register that its application for PIT VIPER was obstructed by the prior registration which is the subject of the registration proceedings. Consequently, Pit Viper established that it was indeed "an aggrieved person".

Invalidity proceedings are not opposition proceedings

This case is really helpful and demonstrates an important difference between invalidity proceedings (post registration) and opposition proceedings (pre registration). In New Zealand opposition proceedings, the onus is generally upon the Trade Mark Applicant to prove a right to registration. However, once a mark is registered, the registration itself is prima facie evidence of the validity of that registration3. So, Pit Viper needed to establish on the balance of probabilities that the PIT VIPER registration was prima facie invalid.

The Trade Mark Owner does nothing... and still wins

In this case, Jian did not file a counterstatement nor any evidence. However, as Pit Viper's evidence was all deemed inadmissible, and as its trade mark application was filed after Jian's trade mark registration, Pit Viper was unable to dislodge the prima facie validity of the relevant registration.

What about the other invalidity grounds?

Pit Viper had pleaded two other invalidity grounds. However each was based upon its reputation in the trade mark PIT VIPER which needed to be supported by evidence. As all of its evidence was deemed inadmissible, those grounds were thrown out.

What to do in New Zealand?

Three words – get a lawyer.

As with so many cases that we see in New Zealand, it is highly likely that this case would have had a different outcome if only Pit Viper's evidence were admissible. As an added incentive for our US or other non-Australasian colleagues, if your client loses a case like this you can always point the finger at someone else (i.e. the Australian/New Zealand lawyer).

Instead, what we see time and time again is not just an unsuccessful outcome, but one in which paragraphs of the decision on public record are devoted to defects in the evidence.


1. Section 11(2), Oaths and Declarations Act 1957.

2. Regulation 34, Trade Mark Regulations 2003.

3. Section 162, Trade Marks Act 2002.

Originally published 15 September 2021

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.