In Leiying Zhu v Shanghai Yunzheng Catering Management Co Limited [2021] NZIPOTM 14A, the Intellectual Property Office of New Zealand (IPONZ) again emphasised the importance of submitting reliable evidence in invalidation proceedings (even where proceedings are undefended).
The decision is a valuable reminder to ensure that declarations made outside New Zealand are executed appropriately and in accordance with New Zealand legislation.
Background to the decision
Shanghai Yungzheng Catering (the applicant) filed an application to invalidate trade mark registration 1086236 桂满陇 in the name of Leiying Zhu (Zhu) on several grounds, including that use of the trademark by the owner was likely to deceive or confuse because of the applicant’s reputation in the trademark.
The applicant filed two statutory declarations in support of its application, one provided by a law clerk of the applicant’s solicitors, and the other provided by the applicant’s IP Director (the ‘Fangping declaration’).
Evidentiary requirements for statutory declarations made outside New Zealand
Section 160(1) of the Trade Marks Act 2002 (TMA) provides that evidence in all proceedings must be given by affidavit or statutory declaration.
Section 11(1) of the Oaths and Declarations Act 1957 (ODA) provides that a declaration made in a Commonwealth country outside New Zealand should be made before “any person authorised by the law of that country to administer an oath there for the purpose of a judicial proceeding”.
Section 11(2) provides that a declaration made in a non-Commonwealth country outside New Zealand should be made before a Commonwealth representative, a judge, a notary public, or a solicitor of the High Court of New Zealand. Commonwealth representatives include ambassadors, commissioners, ministers, and counsellors and any person lawfully acting for such an officer.
In Disney Enterprises Inc v Monster Energy Company [2014] NZIPOTM 39, the commissioner confirmed that there was no prescribed form for declarations made in other jurisdictions. As long as the person taking the declaration is from one of the approved categories under sections 11(1) and (2), there is a degree of flexibility around the precise form of the document, and the manner in which it can be taken. According to the commissioner, it was parliament’s expectation that it was appropriate to rely on the expertise and reliability of the approved categories of persons to ensure that the declarations were made properly.
Evidentiary issues with the Fangping declaration
IPONZ identified the following main evidentiary issues with the Fangping declaration:
The statutory declaration was undated;
The statutory declaration was not witnessed correctly, as it was unclear what authority the witness had and whether the declaration was witnessed on the same day that the declaration was signed; and
The certificate accompanying the declaration certified the authenticity of the declarant’s signature, rather than confirming that the declarant had declared to an authorised person that the contents of the declaration were true.
A declaration made in a non-Commonwealth country should be made before a Commonwealth representative, a judge, a notary public, or a solicitor of the High Court of New Zealand. The Fangping declaration was made before Zhou Liping (Liping). The declaration did not describe Liping’s role or title, and did not state that Liping belonged to one of the approved categories set out in section 11(2) of the ODA.
The commissioner emphasised that as long as Liping belonged to one of the approved categories, a simple description of his position or role would have been sufficient. However, because there was no such description on the declaration, the declaration was inadmissible.
Furthermore, the certificate annexed to the declaration only certified that Fangping’s signature was genuine, and not that Fangping had declared the truth of the contents of the declaration. That this omission can render a declaration inadmissible was confirmed in Aldi Foods Pty Ltd v Giorgio Armani SPA Milan, Swiss Branch Mendrisio [2013] NZIPOTM 45.
Key takeaways
It is important to submit reliable evidence in invalidation proceedings, even where proceedings are undefended. Statutory declarations made in Commonwealth countries outside New Zealand should be made before a person authorised to administer an oath in that country, while declarations made outside the Commonwealth should be made before a Commonwealth representative, a judge, a notary public, or a solicitor of the High Court of New Zealand. Failure to satisfy these evidentiary requirements could result in the dismissal of an invalidation action that might otherwise have been successful.
Kathleen Henning
Trademark executive, AJ Park
E: kathleen.henning@ajpark.com
Kieran O’Connell
Principal, AJ Park
