A recent New Zealand trade mark opposition decision indicates just how difficult it is to lodge evidence "out of time", demonstrating a distinction between Australian and New Zealand trade mark oppositions. Or, as the New Zealand Assistant Commissioner observed in the case so succinctly, "... the late realisation that a case could have been supported with better evidence..... is not a genuine and exceptional circumstance justifying evidence being filed out of time, no matter how it is dressed up. "

In Mohammed Hussein v Industria De Diseno Textil, S.A. (Inditex, S.A.) [2022] NZIPOTM 28,Inditex had lodged evidence in reply to its opposition to Mr Hussein's application to register the trademark ZARA in class 29. Inditex sought to have any evidence which was not considered to be strictly "in reply" admitted as evidence 'out of time'. This step was taken as New Zealand trade mark oppositions require that evidence in reply must be strictly in reply.

Mr Hussein challenged that evidence, in the opposition's pre-hearing directions.

The Hearing Office indicated that it did not intend to allow the evidence out of time, in part because:

  • Inditex's request did not identify which of its 1600+ pages of evidence it sought to file out of time. Rather, it initially sought blanket permission to file any of the reply evidence as "evidence in chief" if it is not deemed to be "strictly in in reply";
  • Inditex's relevant evidence was filed as evidence in reply, and admitted as such by IPONZ;
  • Inditex itself considered the evidence was in reply;
  • Inditex's evidence in chief was filed in December 2020 and the reply evidence was filed in June 2021. Inditex asserted that it only discovered the additional evidence when it was preparing the reply evidence but did not explain why it did not seek an out of time application once that discovery was made; and
  • The request did not particularise how the pandemic specifically impacted the preparation of Inditex's evidence

How can evidence be filed "out of time" in New Zealand trade mark oppositions?

Under Reg 34 of the New Zealand Trade Mark Regulations 2003, evidence can only be lodged out of time if it could not be filed earlier OR there are genuine and exceptional circumstances to justify the filing of such evidence.

The Assistant Commissioner also did not accept that " evidence that "for whatever reason" could not have been filed earlier qualifies as late evidence. The failure to gather evidence may explain why evidence could not be filed earlier, but that is clearly not a sufficient basis on which to say the evidence could not have been filed earlier........There may be some circumstances where evidence that existed earlier could not have been filed earlier, but an applicant will certainly be starting on the back foot when seeking to justify why it could not have been filed."

Numerous New Zealand cases make it abundantly clear that exceptional means exceptional in such a case. In this case, the Assistant Commissioner was careful to avail himself of all relevant authorities, but noted adroitly that "The onus is on the party seeking to have evidence filed out of time to justify the indulgence" and that "It is not enough to simply point to some circumstance that is out of the ordinary and say that justifies the evidence being allowed. There needs to be a causal link between the circumstances and the evidence not having been filed within the prescribed period."

To try and sway the balance, Inditex sought to limit its request to specific parts of its original claimed evidence compiled into a new separate declaration, in a move colourfully referenced by the Assistant Commissioner as "having two bites at the cherry", by trying to resubmit parts of evidence already submitted.

The Assistant Commissioner noted that this approach is " similar to gaming the system having belatedly come to the realisation its evidence in reply is at issue and wanting to rely on that evidence", before concluding Inditex's submissions did not establish the requirement for genuine reasons under the Regulations. Rather, the effort was described "....as alternative means for having evidence filed", which "does not qualify as being genuine for the purposes of the regulation ".

That said, the Assistant Commissioner did note that if the relevant evidence had initially been filed "identifying the evidence considered to be in reply along with an application for evidence out of time identifying evidence subject to the application and connected circumstances the position may have been different". In the form in which it was lodged, the Assistant Commissioner was not convinced that the " out of time" evidence request was genuine, let alone exceptional.

The Assistant Commissioner also noted that Inditex's reasons did not show exceptional circumstances either. Whilst Inditex tried to rely on the Covid 19 pandemic, no causal connection was established between the pandemic and the delay in lodging evidence.

Did "overall justice" support lodgement of the evidence?

The Assistant Commissioner went on to consider the overall justice of the case, to see whether such factors may weigh in Inditex's favour. They did not. In so doing the Assistant Commissioner made an astute observation which points to a difference between New Zealand and Australian trade mark opposition proceedings. Specifically, he noted that:

"There is benefit in the Commissioner having all the relevant evidence for the substantive decision. But this does not trump the other factors in this case. Inditex is responsible for running its own case and maintains the evidence is in reply so will be available. The evidence may have relevance to the.... grounds of opposition. However, this falls far short of negating the issues Inditex faces with establishing genuine and exceptional circumstances."

What would have happened in Australia?

In Australian opposition proceedings, it is not uncommon for a party to try and introduce new evidence out of time. Unlike New Zealand, Australian trade mark opposition proceedings tend to be somewhat more relaxed in applying the rules of evidence and also in terms of allowing evidence to be admitted out of time, under the principle that it is important to consider all relevant evidence in opposition proceedings.

If a similar situation had happened in Australia, there is a reasonably strong prospect that the Inditex evidence may have been allowed. However it also seems likely that Inditex could have been able to file its evidence simply "in reply", as Australia's treatment of such evidence is not as strict as that in New Zealand. This is in part due in part to the New Zealand requirement in Reg. 85 that such evidence must be "strictly in reply".

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.