{"id":6856,"date":"2024-05-10T13:10:49","date_gmt":"2024-05-10T01:10:49","guid":{"rendered":"https:\/\/www.jamesandwells.com\/?p=6856"},"modified":"2024-06-04T12:10:50","modified_gmt":"2024-06-04T00:10:50","slug":"the-winners-and-the-losersa-review-of-trade-mark-opposition-and-invalidity-grounds-in-new-zealand","status":"publish","type":"post","link":"https:\/\/www.jamesandwells.com\/nz\/the-winners-and-the-losersa-review-of-trade-mark-opposition-and-invalidity-grounds-in-new-zealand\/","title":{"rendered":"The winners and the losers\u2026a review of trade mark opposition and invalidity grounds in New Zealand"},"content":{"rendered":"

Raising alternative grounds of objection under s 17(1)(a) and (b) is of limited utility when the alleged unlawfulness is breach of the Fair Trading Act or passing off. If the opponent establishes s 17(1)(a) as a ground of objection, registration will be prohibited. If the opponent does not establish that s 17(1)(a) applies, then it is well established that the higher threshold for establishing a breach of the Fair Trading Act or the tort of passing off in s 17(1)(b) will not be met.<\/em>1<\/sup><\/p>\n

Never were truer words written in an IPONZ trade mark decision. And yet, despite Assistant Commissioner Casey KC\u2019s clear warning in 2016, and numerous decisions since then which have repeated the warning,2<\/sup> parties have, over the last eight years, continued to needlessly plead breach of the Fair Trading Act 1986 (FTA) and passing off as grounds of opposition or invalidity alongside section 17(1)(a).<\/p>\n

But this article is not about why pleading breach of FTA and passing off as grounds of opposition and invalidity alongside section 17(1)(a) is the very definition of an exercise in futility (as well as a magnet for increased or decreased costs awards); not exclusively anyway. Rather, this article looks more broadly at the merits (or otherwise) of all grounds of opposition and invalidity considered in IPONZ decisions published on NZLII in 2022-2023 to see what, if any, insights might be gleaned.<\/p>\n

At this point, I must admit that that I was inspired to write this review by the recent article penned by Jenny Mackie of Michael Buck IP3<\/sup> which, as well remarking on IP Australia\u2019s fee review, analysed the success and failure rates of grounds in IP Australia trade mark opposition proceedings in 2023. With Jenny\u2019s consent, there are obvious similarities between her review and mine, including methodology and colours used for the charts. Hopefully these similarities will not only make it straightforward to read the articles side by side but also to discern the similarities and differences between jurisdictions. My sincere thanks to Jenny.<\/p>\n

Grounds of opposition and invalidity – methodology<\/strong><\/p>\n

I looked at every opposition and invalidity proceeding that resulted in an Assistant Commissioner\u2019s decision published on NZLII in 2022 and 2023. I noted the grounds pleaded as recorded in the published decisions, the grounds that were successful (wholly or partially), the grounds that were not successful at all, and the grounds that were not decided at the Assistant Commissioners\u2019 discretion. To the extent any grounds were pleaded in a notice of opposition or application for declaration of invalidity but not recorded in the published decisions, they are not reflected in the analysis.<\/p>\n

I reviewed two years\u2019 worth of decisions as the volume of decisions issued in New Zealand per year is not as high as in Australia. To put this into actual numbers, I reviewed 61 decisions (2022 \u2013 25 decisions; 2023 \u2013 36 decisions), while Jenny reviewed 129 from 2023 alone. While I could have analysed 2021 and 2022 decisions to bolster my sample size, I considered two years\u2019 worth of data should be sufficient to yield potentially meaningful insights.<\/p>\n

The analysis does not take into account any appeals of Assistant Commissioner\u2019s decisions to the New Zealand High Court or above.<\/p>\n

Grounds of opposition and invalidity – analysis<\/strong><\/p>\n

Overall summary<\/strong><\/p>\n

Of the 61 decisions reviewed, 44 were decided oppositions and 17 were decided invalidity applications. Although the bulk of the decisions were decided \u2018on the papers\u2019 at the election of both parties, or \u2018on the papers\u2019 at the election of one party and by written submissions at the election of the other party, the decisions did not reveal any data that might suggest one hearing option was more likely to be successful than another hearing option.<\/p>\n

The most popular grounds pleaded were (in descending order):<\/p>\n