Sailun Group Co., Ltd (Sailun) successfully
opposed registration of Wiefang Hadong Rubber Co., Ltd's
(Wiefang) New Zealand application to register the
trade mark 
in class 12. The
case is a good warning to foreign Opponents, as all of
Sailun's evidence was deemed inadmissible. Luckily for
Sailun, it had a prior New Zealand trade mark registration to rely
upon, which was determinative in it ultimately winning the
opposition.
Why was Sailun's evidence inadmissible?
The Opponent Sailun filed a notarized affidavit signed by its Vice President. However, the notarial certification did not explain upon what authority the witness had claimed to witness the Affidavit. The certification also related only to the authenticity of the Vice President's signature, rather than certifying to the truth of the contents of the Affidavit. Furthermore, the exhibits did not correspond with their description in the Affidavit and the exhibits themselves were not witnessed.
IPONZ warned the Opponent's solicitors of this defect. However the warning was met with a simple assertion that the Affidavit "has been witnessed in accordance with the relevant practice in China".
Here we go again (!!) – There is a high evidentiary bar in New Zealand
Many Aotearoa New Zealand trade mark oppositions are lost as Opponents' evidence is refused, due to Aotearoa New Zealand's strict evidentiary requirements. And it was nearly so in this case too.
Here, the Opponent needed to establish that the witness to the relevant Affidavit was a "Commonwealth Representative", as defined under the Oaths and Declarations Act 1957. As the Opponent did not satisfy this requirement, its evidence was deemed inadmissible.
How did the Opponent Win a New Zealand opposition, with no evidence?
Ordinarily, inadmissibility of all of the opponent's evidence would be "case closed", resulting in victory to the Applicant. Certainly in this case, all of the evidentiary-based opposition grounds were dismissed – specifically the Assistant Commissioner dismissed assertions that use of the opposed mark was likely to deceive or cause confusion1, was contrary to law2 and that the application was made in bad faith3 .
However the Opponent Sailun was lucky enough to have one last
card to play. Specifically, its registration for the mark 
covered the same or very similar goods
to those covered by the opposed application. As such, Sailun could
still win the opposition if the Assistant Commissioner found the
respective marks to be similar4 .
Is similar
to ?
The Assistant Commissioner found that the respective marks are indeed "similar" (not "deceptively similar"; we are in New Zealand not in Australia after all).
Some may find this interesting as the Opponent's mark may appear as SAI-LUN, whilst the opposed mark is a combination of two common English words ("SAIL" and "WIN"). Nonetheless, the Assistant Commissioner found that there is a high degree of similarity to the marks and thus the Opponent won the opposition, based solely upon its prior New Zealand trade mark registration.
A warning for foreign parties (and their attorneys) in New Zealand opposition proceedings
This warning is one which is sounded again and again in New Zealand trade mark opposition proceedings. Specifically, many New Zealand trade mark oppositions are lost because evidence is deemed inadmissible. This is another case to add to that list and a warning for Australian and New Zealand IP lawyers – particularly those who think that they can use the same evidence which may be acceptable in Australia.
Footnotes
1. Section 17(1)(a) Trade Marks Act 2002 (Act)
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 to the subject matter. Specialist advice should be sought about your specific circumstances.
