Evidence 101 for IPONZ Proceedings

Trade Mark Lawyer NZ

Alex McDonald | Trade Mark Lawyer, Auckland NZ

Gone are the days when the standard of evidence for hearings involving trade mark, patent and design registration disputes before the IPONZ Commissioner was a relaxed affair.

Decisions issued by the Commissioner show that IPONZ now requires the same standard of evidence as the High Court does including the same compliance with the provisions of the Evidence Act 2006. The decisions of the Assistant Commissioner in Orora Packaging (New Zealand) Limited v JE & ER Morren T/A Contour Sales & Packaging[1] and Avanti Bicycle Company Ltd v Arabella Pte. Ltd[2] illustrate the point.

So what are the major traps to be avoided in preparing evidence in IPONZ proceedings according to Alex McDonald, trade mark lawyer? The principal pitfalls are described below.

Evidence which is irrelevant (s 7 (2) Evidence Act 2006)

Irrelevant evidence is inadmissible. Relevant evidence is evidence that has the tendency to either prove or disprove anything that is of consequence to the determination of a proceeding.

For example, in an IPONZ revocation for non-use proceeding where the relevant non-use period is a continuous period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation, evidence of use outside the relevant period or evidence which doesn’t specify dates is irrelevant as it cannot prove or disprove anything of consequence.

Hearsay statements (s 17 Evidence Act 2006) not subject to s 18, 19 exceptions

The Act defines hearsay evidence as a statement that was made by a person other than the witness and is offered in evidence at the proceeding to prove the truth of its contents.[3]

Hearsay evidence is inadmissible but there are a number of exceptions including that:

  1. the circumstances surrounding the statement provide reasonable assurance that the statement is reliable;
  2. that the maker of the statement is unavailable as a witness or the Judge considers that undue expense or delay would be caused if the maker of the statement were required to be a witness;[4]
  3. the statement is contained in a business record allowed under s.19 Evidence Act 2006.

Using the revocation example again, evidence of use which contains statements about oral use of a trade mark is likely to be inadmissible if the deponent doesn’t make it clear that he or she personally used or witnessed the oral use of the mark.

Statements of Opinion (S 23 Evidence Act 2006) not subject to s 23, 24 Exceptions

Generally, a statement of opinion is inadmissible. There are exceptions to this where the opinion is necessary to enable the witness to communicate, or assist the fact finder to understand, what the witness saw, heard or otherwise perceived, or where the opinion is from an expert witness.

In the Avanti case, multiple paragraphs were deemed inadmissible as the deponent had expressed their opinion as to the market awareness of the mark where it was the decision of the tribunal to determine this.[5]

Probative value outweighed by prejudicial effect (s 8(1)(a) Evidence Act 2006)

The Act sets out a general exclusion of evidence where its probative value is outweighed by the risk that the evidence will have an unfairly prejudicial effect on the proceeding; or will needlessly prolong the proceeding.

In IPONZ proceedings if evidence is not sufficiently clear as to what it is meant to mean, it may be considered prejudicial to make an inference or assumption as to its meaning. In the Avanti case the opponent’s evidence was unclear as to which trademarks deponents were referring to throughout their evidence when they used the term “Marks”. Initially in the evidence “Marks” was defined as the opponent’s relevant marks however the term was also used as a reference to irrelevant marks which cast doubt on the reliability of the rest of the evidence. This led to findings that the evidence was inadmissible or the evidence was admissible but given little weight.

Pro forma statements of deponents replicated in evidence of more than one deponent

Evidence in this category will not be regarded as reliable because it is impossible that deponents could have truly expressed themselves in identical terms, the inference being that the statements have been written for them by legal representatives. The Orora Packaging decision provides an illustration of where evidence was excluded on this ground.[6]

Reply Evidence Not Strictly in Reply

Evidence in reply must be strictly in reply. The obvious reason for this is to avoid the introduction of new evidence to which the other party cannot respond. Unlike the other issues addressed above, the Trade Marks Regulations 2003 deal with reply evidence directly. The regulations relating to the filing of evidence in oppositions, rectifications, revocations, invalidity proceedings and cancellations all clearly state that evidence filed in reply must be “strictly in reply”.[7]

The whole of the reply evidence supplied in the Avanti case was found to be inadmissible as it did not establish any facts, and, in particular, any facts that could be said to be strictly in reply.[8]

[1] [2015] NZIPOTM 22, a case which Alex McDonald, trade mark lawyer represented the successful party

[2] 2014 NZIPOTM 14

[3] Evidence Act 2006, s 4.

[4] Section 18.

[5] [17].

[6] [96].

[7] Regs 85, 93, 100, 105,112, 121.

[8] [22].

Alex McDonald | Trade Mark Lawyer, Auckland NZ