This post looks at the trade mark opposition procedure in New Zealand, some practical tips for enhancing your chances of success on an opposition and options if no opposition is lodged and a mark proceeds to registration.
What is a trade mark?
A trade mark can consist of a word, phrase, logo, colour, smell or shape or any combination of those items. Trade marks are registered in a country by country basis, although there is a system of international co-operation.
The trade mark owner can sue for infringement (and seek an injunction and account of profits or award of damages) if a person or company uses a sign which is identical or similar to the registered trade mark in relation to the same or similar goods or services for which the mark is registered.
If the mark and goods or services are identical, that is the end of the matter. If the mark and/or goods or services are similar rather than identical, it will amount to infringement if there is a likelihood of confusion or deception.
In New Zealand, trade mark applications are filed online with the Intellectual Property Office of New Zealand (IPONZ). Following the application, IPONZ examines the trade mark application to check that it meets the criteria for registration, including whether it is too close to any existing registered marks. Sometimes that examination process can include correspondence back and forth with the trade mark applicant.
If IPONZ accepts the application, it is then advertised in the Office Journal. Any person affected by the application (such as a rival trader) then has three months to file an opposition to the application with IPONZ.
If no opposition is filed, the mark will proceed to registration. The mark is deemed to have been registered from the date of application.
Opposition to a trade mark application
There are a number of possible grounds for opposition. These include:
- The mark not being registrable because it does not qualify as a trade mark.
- The mark being descriptive, non-distinctive or a mark which other traders might want to use in good faith.
- The mark being too close to an existing registered mark.
- The mark being likely to cause deception or confusion because of its similarity to registered or unregistered marks.
- Use of the mark being contrary to law.
- The application being made in bad faith.
There can often be overlap between the grounds of opposition. Specialist advice should be taken to ensure that potentially strong grounds are not omitted, and that the cited grounds can all succeed. There is a growing trend towards parties not being awarded costs if they take a “scattergun” approach to grounds of opposition, particularly if an opponent alleges but does not prove bad faith – even if the opposition is successful on other grounds.
If an opposition is filed, the applicant must file a counter-statement which responds to the grounds of opposition. Both parties then have an opportunity to file evidence sequentially (opponent first, then applicant, then reply evidence from the opponent). A hearing is then held by IPONZ before an Assistant Commissioner of Trade Marks, who will decide whether or not the application should proceed to registration. Decisions of the Assistant Commissioner can be appealed to the High Court.
Is an opposition necessary?
If a party is using a sign which is similar to a trade mark, best practice is to oppose a trade mark. However, it is worth bearing in mind some practicalities of trade mark infringement:
- Use of a word, phrase or logo will only infringe if it is being used “as a trade mark”. There is a substantial amount of law as to the meaning of that expression.
- There is a defence of prior continuous use, if the first use of the defendant pre-dates both the first use of the mark by the applicant and the date of the application.
- Comparative advertising is permitted under the Trade Marks Act, although the defence is not an absolute one.
Equally, a party can apply to revoke a registered trade mark or have it declared invalid on the grounds set out above, even if no opposition was filed. An application for a declaration or invalidity can be filed with IPONZ or the High Court. Often this will arise in one of two ways:
- When the party is sued for trade mark infringement.
- Where the registered trade mark is blocking a later application, particularly if there is an allegation that the earlier mark has been abandoned and not used for three years.
Sometimes matters can be resolved through a licence or co-existence agreement, but a party’s willingness to enter into that sort of arrangement will be influenced by the perceived strength of their legal position.
Evidence and hearings in trade mark oppositions
IPONZ hearings have become more formal in recent years, and it is strongly recommended that parties instruct specialist counsel. The hearings often involve issues of a technical nature, such as admissibility of evidence, and the person presenting the case needs to know the evidence, the law and have experience in advocacy. They need to be in a position to respond to questioning from the hearings officer – it is not simply a case of reading out written submissions.
It is important that the person who will be arguing the case as counsel is involved at an early stage – ideally prior to the notice of opposition being filed, but definitely before the evidence is filed. There is less scope for a specialist advocate to influence the outcome of a case if they are only instructed shortly before the hearing.
As counsel I see a number of cases where the parties undoubtedly should be able to corroborate the points which they assert (e.g. that they were trading extensively in New Zealand), but when the evidence is examined critically at the hearing there are major gaps.
The most common mistakes seems to arise where evidence is prepared in haste, and where overseas clients or referring firms file a template declaration which does not address the particular issues in the New Zealand opposition. Examples include not focusing on activity before the priority date, and failing to provide clear evidence of sales or marketing expenditure in relation to New Zealand specifically as distinct from consolidated Australia/New Zealand figures or even lumping New Zealand in with “rest of the world” or “non-US” figures.