The Assistant Commissioner of Trade Marks in New Zealand has rejected a declaration of invalidity filed against registration of the trade mark GO FETCH (1217532a.jpg), in Emma Leigh Brandso v Guardians (NZ) Limited [2022] NZIPOTM 14 (29 June 2022). The victory to the brand owner occurred without her taking any active part in the proceedings, in a decision which highlights the risks that attorneys face if they prepare and lodge their own evidence in IP proceedings. The case also demonstrates again that New Zealand opposition proceedings require a high standard of evidence – extending through to the drafting of the proceeding documents themselves.

Deadlines are strict in New Zealand oppositions

Guardians (NZ) Limited filed an invalidity application against Ms Emma Brandso's New Zealand registration No. 1150132 GO FETCH, setting a deadline of 10 August 2021.

By way of letter dated 19 August 2021, Ms Brandso notified IPONZ that she wished to defend the registration and provided reasons as to why the counterstatement was not filed prior to the deadline. The letter also contained information regarding her trade mark registration.

Unfortunately for Ms Brandso, the Assistant Commissioner upheld the original IPONZ assessment that the letter could not be considered. This is consistent with New Zealand practice and provides a warning to brand owners and their attorneys that extensions of numerous deadlines cannot be granted retrospectively. Consequently, Ms Brandso could not play any further part in the proceedings.

The risks of attorneys filing evidence in New Zealand

Guardian's sole evidence to support the invalidity action was a Statutory Declaration of Guardian's IP attorney.

An unfortunate risk that IP attorneys face in Australia and New Zealand is that they may find themselves having to prepare and lodge evidence in IP proceedings, which would more suitably be provided by their client directly. This case highlights some of those risks. Specifically, whilst much of the evidence in the IP Attorney's declaration was admissible as it was from publically available sources, a reasonable proportion of the declaration was deemed inadmissible as hearsay, or attracted much less weight, as it related to the business affairs of Guardian.

The Assistant Commissioner disregarded much of Guardian's evidence as it did not include proper attribution back to Guardian or failed to provide analytical information such as website visitors or Facebook followers. As such, the IP Attorney's declaration failed to establish the low level of "awareness" in the Guardian brand necessary to succeed under New Zealand's "reverse onus" opposition ground of section 17(1)(a).

Watch your drafting – typos can bite!

The invalidity action pleaded section 25 (1)(c) – a ground prohibiting registration of trade marks if they are similar to one that is well known in New Zealand. However, it is clear from the pleadings themselves that the Applicant intended to refer to section 25(1)(b) – prohibiting registration of a trade mark that is similar to an earlier trade mark registration. The Assistant Commissioner demonstrated once again how precise parties must be in drafting opposition proceedings. Whilst the language of the pleading itself made it clear that section 25(1)(b) was being pursued (rather than sub-section 25(1)(c)), the Assistant Commissioner was bound to assess the action based upon the specific ground identified, rather than that which Guardian had clearly intended to pursue.

This is clear warning once again to attorneys to ensure that they are very careful in identifying the relevant grounds upon which they rely in New Zealand IP proceedings. If the same situation had occurred in Australia, it is reasonably likely that the IP Australia Delegate would have allowed the ground that was pleaded, even if there was an error identified in the specific section number.

The Assistant Commissioner did go on to consider both subsection (b) and sub section (c), simply for completeness. However she found that the prior mark upon which Guardian relied was not sufficiently similar for there to be any risk of confusion.

What can brand owners (and their attorneys) learn?

If possible, evidence filed in New Zealand IP proceedings should come directly from the source of the evidence (i.e., the brand owner). Attorneys who are party to the proceedings should not submit evidence of their own, except that of a purely procedural nature such as the state of the Trade Mark Register or other publically available information.

This case is a reminder once again that the standards of evidence and drafting in New Zealand IP proceedings are set at a very high.

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