Take care with your evidence of reputation in trade mark opposition proceedings

The most two common grounds for an opposition are that the later filed trade mark is identical or similar to a prior registered trade mark for the same/similar goods/services; and that use of the later filed trade mark is likely to cause confusion due to the reputation that exists in a prior used trade mark.

In this article, we look at what evidence is required to establish a prior reputation in a trade mark for the purposes of a successful opposition under section 17(1)(a) of the Trade Marks Act 2002.

Reputation essentials

The Opponent has an initial evidential burden to establish a reputation.

The requisite reputation equates to awareness or knowledge of the opponent’s trade mark.

The reputation must exist as at the date of the applicant’s application.

Reputation can usually be inferred from evidence of actual use in New Zealand.

Reputation can also be inferred from use overseas if the evidence shows that use came to the attention of NZ based consumers or traders.

The evidence must clearly show the source of the use, the date of use and actual use of the trade mark.

If the opponent cannot join all these dots, the section 17(1)(a) ground of opposition will fail.

Let’s look a little deeper

Section 17(1)(a) of the Trade Marks Act provides an absolute ground for not registering a trade mark and states that the Commissioner must not register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or cause confusion. The purpose of this provision is to protect the public from being deceived or confused, above protecting the private interests of the parties.

The overall onus is on the applicant for registration of the later filed trade mark to establish that there is not a likelihood of deception or confusion. However, before the applicant needs to address this issue, there is an initial evidential onus on the opponent to establish a reputation in New Zealand prior to the filing date of the application being opposed (the relevant date). For without a reputation, there can be no confusion. The filing date of the application being opposed is the relevant date by when the reputation must exist.

To establish a reputation, the opponent needs demonstrate an “awareness, cognisance or knowledge” of its mark.¹

The reputation need not be widespread as the required scope of the reputation will depend on the nature of the trade mark and the goods/services in relation to which it is used. For example, where the trade mark is used in respect of goods/services with only a very narrow or specialised use or purpose, the trade mark may be known only to a small number of people. However, in other cases, a trade mark may be applied to goods/services sold and provided very broadly or used to a range of numerous different goods/services. In these cases, the opponent will have to show broader use and reputation.

This initial inquiry is into the “circumstances of trade and is the background against which the trade mark is regarded as notionally in use”. The correct focus is on the awareness of the opponent’s mark amongst prospective purchasers of the goods/services in relation to which their trade mark is used, and individuals and entities involved in that trade; not the entirety of the purchasing public of New Zealand.²

While the reputation threshold required is relatively low to reflect the consumer protection focus of s 17(1)(a), establishing knowledge or reputation requires an evidential foundation.³

Awareness is usually inferred from evidence of the extent to which the mark has been used in New Zealand. The usual method of demonstrating awareness of a mark is to provide information about New Zealand market share, sales figures, information about advertising expenditure and consumer uptake of promotional material.⁴

In addition to specific evidence of use in New Zealand, there are a number of other ways to show the required knowledge / awareness in New Zealand for opponents not trading in New Zealand. There can be a spillover reputation due to use overseas⁵. For example, there could be a spillover effect due to a reputation in another country established through evidence of advertising in magazines distributed in New Zealand or online sales to persons in New Zealand.

Online use overseas can be relevant if shown to have been accessed by NZ based consumers and that the use/access was before the relevant date. Common examples of online use that the opponent might wish to rely upon include social media platforms, their own and/or third party retail websites and media articles.

Any evidence filed will be assessed carefully by the Commissioner who will be looking for the source of the evidence, the date of the post and whether the post actually shows use of the trade mark in issue.

Social media platforms

Evidence of global social media accounts and the follower numbers are of little relevance if there is no evidence of the follower numbers of persons in NZ. In other words, without the spillover effect, the evidence does not establish a reputation in New Zealand.

In isolation, the follower numbers of a NZ-specific social media platform is unlikely to be sufficient unless the evidence shows the number of followers as at the relevant date.⁶

If submitting screenshots from social media platforms promoting the goods/services, take care that the screenshots clearly show the source of the extract and the date of the post. Only posts before the relevant date will be relevant.⁷ If the posts are undated or dated after the relevant date they will not be considered by the Commissioner.

Websites

If submitting evidence of use on their global website the opponent will have to provide supporting evidence that demonstrates that consumers or traders in NZ have accessed the global site – and that they did so before the relevant date.⁸

Proof of sales from such online retailers to people in New Zealand will be relevant to the establishment of a reputation in New Zealand.

Retail stores

The same criteria applies to extracts from websites of retail traders in NZ. Make sure the source, date of the post and trade mark are all clearly evident.

When filing evidence of online use the use of Internet Archive Wayback Machine is a useful tool to overcome the evidential issues as it will show date of capture⁹ and also the source of the material. Extracts from the Internet Archive Wayback Machine will be accepted at face value without any further verification, in the absence of evidence of inaccuracy in the archival date listed in the Internet Archive being adduced.¹⁰

Media articles

Evidence of editorial write ups, blog posts, media releases can all be relevant to establishing a reputation. However, again, if the publication is not specific to NZ then evidence of circulation/readership numbers will be useful to show that articles might have caught the attention of consumers/traders in NZ.¹¹ Also remember that the publications must show use of the trade mark in issue before the relevant date.¹²

A final caution

As well as showing use of the opponent’s trade mark, be aware that if the evidence does not show prominent use of the trade mark it may not be possible for the Commissioner to infer an awareness from that use.¹³

As well as not proving the opponent’s case, the filing of irrelevant evidence may give rise to an adverse finding on costs or an uplift in the award of costs against an unsuccessful opponent¹⁴.

When preparing evidence in opposition proceedings to establish a reputation, focus on evidence that shows a connection to the New Zealand market and consumers, that predates the filing date of the application being opposed, and clearly shows use of the opponent’s trade mark.

Elena Szentivanyi – March 2025

Footnotes:

NV Sumatra Tobacco Trading Co v British American Tobacco (Brands) Incorporated [2010] NZCA 24, (2010) 86 IPR 206 (CA) at [77]; and Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at [63]
Sexwax Incorporated v Zoggs International Limited 1 [2015] 2 NZLR 1 (Court of Appeal) at [48], [65] and [70]
Comite International Olympique v Tempting Brands Netherlands BV [2019] NZHC 2476 at [44]
Comite International Olympique v Tempting Brands Netherlands BV [2019] NZHC 2476 at [45], Churchman J endorsed finding of Commissioner
Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Limited [1978] 2 NZLR 50; [1979] RPC 410 (CA); Council of Ivy Group Presidents (t/a The Ivy League) v Pacific Dunlop (Asia) Limited (2000) 66 IPR 202 (HC); Valley Girl Co Ltd v Hanama Collection Pty Ltd (2005) 66 IPR 214 (HC)
Enhui Chen v Xiaomi Inc. [2024] NZIPOTM 40 (4 December 2024) (Enhui) at [26]
Enhui at [26]
Enhui at [27]
Enhui at [29]
The reliability of the Internet Archive Wayback Machine has been accepted since at least The Sporting Exchange Limited v New Zealand Racing Board [2010] NZIPOPAT 29 (20 December 2010)
Enhui at [31]
Enhui at [30 - 31]
Enhui at [30]
See for example Utemaster NZ Limited v Monster Energy Company [2022] NZIPOTM 6 (25 February 2022)