Evidence

1. Introduction

In simple terms, evidence has been defined as “facts or testimony in support of a conclusion, statement or belief”. ¹

Evidence plays an important part in many proceedings before the Intellectual Property Office of New Zealand (IPONZ). For instance, if an owner of a registered trade mark intends to oppose an application for the revocation of that mark on the grounds of non-use, the owner must provide evidence of the use of its trade mark. ² In trade mark opposition proceedings an opponent relying on section 25(1)(c) of the Trade Marks Act 2002 (Act) must provide evidence to establish that its trade mark is well known in New Zealand.

These practice guidelines address a range of evidential matters that are relevant to IPONZ proceedings.

2. Form of evidence

Section 160(1) of the Act provides that evidence in IPONZ proceedings must be given by statutory declaration or affidavit, in the absence of directions to the contrary. ³ However, the Commissioner of Trade Marks may: ⁴

(a) take oral evidence instead of, or in addition to, evidence by affidavit or declaration; or

(b) permit cross-examination of a person who has given an affidavit or declaration.

Any evidence given on oath before the Commissioner is deemed to be given in a judicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961. ⁵ Section 109(1) of the Crimes Act provides that any person who commits perjury is liable to imprisonment for a term not exceeding 7 years. ⁶

Section 111 of the Crimes Act applies to every statutory declaration and affidavit made for the purposes of the Trade Marks Act. This means that any person who makes a statement or declaration that would amount to perjury if made on oath in a judicial proceeding is liable to imprisonment for a term not exceeding 3 years. ⁸

3. Statutory declarations

The usual practice in IPONZ proceedings is for evidence to be given by way of statutory declaration. A statutory declaration is a statement in writing, solemnly and sincerely declared to be true, and made by a person under the Oaths and Declarations Act 1957. The person making the declaration is known as the “declarant”.

(a) Declarations made in New Zealand

A declaration made in New Zealand must be in the form set out in Schedule 1 of the Oaths and Declarations Act, as follows: ⁹

I, AB, of [insert place of abode and occupation], solemnly and sincerely declare that [insert facts].
And I make this solemn declaration conscientiously believing the same to be true and by virtue of the Oaths and Declarations Act 1957.

AB
Declared at [place, date]
JS, Justice of the Peace
[or other person authorised to take a statutory declaration].

Section 9 of the Oaths and Declarations Act sets out the persons authorised to take a statutory declaration made in New Zealand. Such persons include any one of the following: ¹⁰

• A person enrolled as a barrister and solicitor of the High Court – the New Zealand Law Society website contains information about how to find a barrister or solicitor (www.lawsociety.org.nz).
• Justice of the Peace – service desks for Justices of the Peace are listed on the website www.justiceofthepeace.org.nz.
• Notary public – lists of notaries public are available on the website of the New Zealand Society of Notaries, www.notarypublic.org.nz.
• Registrar or Deputy Registrar of the Supreme Court, Court of Appeal, High Court or any District Court.
• Member of Parliament.
• A person who is: ¹¹
• a fellow of the New Zealand Institute of Legal Executives and is acting in the employment of the holder of a practising certificate as a barrister and solicitor of the High Court; or
• an employee of the New Zealand Transport Agency, authorised for that purpose by the Minister of Justice; or
• an employee of Public Trust authorised for that purpose by the Minister of Justice; or
• an officer in the service of the Crown, or of a local authority authorised for that purpose by the Minister of Justice.

An employee or an officer authorised to take declarations under subsections 9(1)(i)-(j) of the Oaths and Declarations Act may be designated by name, e.g. A. Smith, or as the holder for the time being of a specified office or title, e.g. the Executive Officer.

The description of the person taking the declaration must always be stated, but no further proof of their authority should be required.

A lawyer holding a practising certificate has an obligation to administer oaths and take declarations, subject to availability and certain exceptions. ¹² Usually persons taking declarations in New Zealand will not charge any fee for their services in doing so.

(b) Declarations made outside New Zealand

The Oaths and Declarations Act does not specify any particular form for declarations made outside New Zealand. However, IPONZ prefers declarations to follow the form set out in Schedule 1 of the Oaths and Declarations Act. Alternatively, a declaration that has been completed in accordance with the relevant overseas legislation is acceptable. For example, declarations made in Australia under the Australian Statutory Declarations Act 1959.

In Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 Assistant Commissioner Glover stated: ¹³

In my view … it is significant that Schedule 1 of the Oaths and Declarations Act 1957 sets out a prescribed form that a declaration made in New Zealand must follow, yet there is no such prescribed form for declarations made in other jurisdictions. I consider that this difference arises because it was anticipated that the “local” form of the document, and the particular assurances required from a declarant, might well be adopted in place of the format prescribed by Schedule 1.

It appears to me that the legislation is intended to establish a practical compromise – so long as the person taking the declaration is from one of the approved categories, there is a degree of flexibility around the precise form of the document, and the manner in which it is taken. It would be awkward, to say the least, if declarations from California and other jurisdictions could not be taken in the usual (locally understood) manner.

…

… I consider that by nominating certain categories of persons to take declarations in non-Commonwealth countries, Parliament’s expectation was that it was appropriate to rely on the expertise and reliability of those persons to ensure that the declarations were made properly.

If the “local” form for a declaration is used then it is prudent to include the substantive elements of Schedule 1 in the declaration. In AFT Pharmaceuticals Limited v SmithKline Beecham Limited [2014] NZIPOTM 48 the owner argued that a statutory declaration should not be admitted in evidence because it was at best, executed under Australian practices, and did not comply with New Zealand’s Oaths and Declarations Act 1957. In allowing the statutory declaration, the Assistant Commissioner observed that, from a substantive perspective, the key elements of Schedule 1 of the Oaths and Declaration Act were included within the declaration in issue, even though the form of the declaration was different to Schedule 1. ¹⁴ In particular, the declaration in issue confirmed:

• the declarant’s name, place of abode and occupation;
• that she solemnly and sincerely declares the facts given in the declaration;
• that she believes the statements in the declaration to be true;
• where the declaration was declared and the date of the declaration; and
• before whom the declaration was taken.

A declaration made in a “Commonwealth” ¹⁵ country other than New Zealand shall be made before: ¹⁶

• a Judge;
• a Commissioner of Oaths;
• a notary public;
• a Justice of the Peace; or
• any person authorised by the law of the Commonwealth country to administer an oath there for the purpose of a judicial proceeding; or
• a “Commonwealth representative”; ¹⁷ or
• a solicitor of the High Court of New Zealand.

A declaration made in a non-Commonwealth country shall be made before a:

• Commonwealth representative; or
• Judge; or
• notary public; or
• solicitor of the High Court of New Zealand.

It is not necessary to provide proof of the official or other character of the person taking the declaration made outside New Zealand. ¹⁸ It is also not necessary to provide proof that the signature or seal of the person authorised to take the declaration outside New Zealand is in fact the signature or seal of that person. However, the person taking the declaration should specify the position they hold, which entitles them to take the declaration.

4. Affidavits

An affidavit is a statement in writing, either sworn on oath or affirmed to be true, which is signed by the person giving the affidavit in accordance with the Oaths and Declarations Act 1957 and the High Court Rules. ¹⁹ The person making the affidavit is known as the “deponent”.

The deponent of a sworn affidavit is required to swear it while holding his or her hand on a copy of the Bible or another religious book such as the Koran. The absence of religious belief on the part of the deponent does not affect the validity of the affidavit. ²⁰ A person who objects to making a religious oath may make an affirmation instead, and the affirmation shall have the same force and effect as an oath. ²¹

High Court Rule 9.73 provides that an affidavit may only be used in a court proceeding if:

• in the case of a sworn affidavit, it is sworn in accordance with the Oaths and Declarations Act 1957 before a person authorised to administer oaths under that Act or under High Court Rules 9.85 or 9.86;
• in the case of an affirmed affidavit, it complies with the Oaths and Declarations Act 1957.

In comparison, statutory declarations are generally not acceptable as evidence in court proceedings. However, under section 160(3) of the Trade Marks Act, a statutory declaration given in trade mark proceedings under that Act may, in the case of appeal, be used before the court instead of evidence by affidavit. If a statutory declaration is used in such a manner, it has all the incidents and consequences of evidence by affidavit. ²²

Section 83(2) of the Evidence Act 2006 provides that an affidavit in a civil proceeding may be given in evidence only if it is a personal statement of the deponent and does not contain a statement that is otherwise inadmissible under that Act.

(a) Form and content of affidavits

High Court Rule 9.76 provides that: ²³

9.76 Form and contents of affidavits

(1) An affidavit—

(a) must be expressed in the first person; and

(b) must state the full name, occupation, and place of residence of the person making it; and

(c) must either—

(i) be signed by that person; or

(ii) if that person cannot write, have that person's mark set to it by that person; and

(d) must be confined—

(i) to matters that would be admissible if given in evidence at trial by the deponent; and

(ii) if in reply, to matters strictly in reply.

(2) The court—

(a) may refuse to read an affidavit that—

(i) unnecessarily sets forth any argumentative matter or copies of or extracts from documents; or

(ii) being in reply, introduces new matter; and

(b) may order that the costs incurred in respect of or occasioned by an affidavit to which paragraph (a) applies be paid by the party filing the affidavit.

(3) The taker must sign the affidavit after the signature of the person making it, and must state the date and place of swearing or affirming the affidavit and the taker's qualification (in this subpart referred to as the statement by the taker).

(4) If an affidavit has more than 1 page,—

(a) the deponent must initial or set the deponent's mark on each page (not including the cover sheet) that precedes the page on which the statement by the taker in accordance with subclause (3) appears; and

(b) the taker must initial each of those pages.

(5) This rule does not limit the extent to which subpart 2 of Part 5 applies in respect of affidavits.

The High Court Rules do not prescribe any general form for affidavits. However, IPONZ will accept the following general form for affidavits.

Swearing an affidavit

"I, [full name], of [place of residence], [occupation], swear:

[Insert facts]
[Proceed in numbered paragraphs]

Sworn at [place],

This…………..day of……………20…………
Signature of person swearing affidavit

before me
[Signature of taker]
[description of taker, including taker’s qualification, full name and place of residence]"

Affirming an affidavit

"I, [full name], of [place of residence], [occupation], solemnly and sincerely affirm:

[Insert facts]
[Proceed in numbered paragraphs]

Affirmed at [place],

This…………..day of……………20…………
Signature of person swearing affidavit

before me
[Signature of taker]
[description of taker, including taker’s qualification, full name and place of residence]"

The form of words commencing with "Sworn/Affirmed" is known as the jurat. Variations such as "sworn/affirmed by the said A.B." or "sworn/affirmed by the deponent" are acceptable.

(b) Affidavits taken in New Zealand

An affidavit may be sworn in New Zealand before a: ²⁴

• solicitor, meaning a person enrolled as a barrister and solicitor of the High Court;
• Registrar, which includes a Deputy Registrar of the High Court, and a Registrar and Deputy Registrar of the District Court; or
• Justice of the Peace.

No affidavit may be used if it was sworn before a solicitor who, at the time of taking it, was acting as: ²⁵

• the solicitor of a party to the proceeding; or
• a partner in, or a solicitor employed or engaged by, the firm of the solicitor of a party to the proceeding; or
• the agent of the solicitor of a party to the proceeding.

The only exception is where the affidavit is sworn in respect of a non-contentious proceeding. ²⁶

(c) Affidavits made outside New Zealand

High Court Rule 9.86(1) provides that an affidavit may be sworn in a place outside New Zealand before a:

• Commissioner of the High Court of New Zealand who has authority in that place; or
• person who is authorised to administer oaths by the law of that place; or
• person who is authorised by a Judge to administer the oath required for the affidavit.

High Court Rule 9.86(2) states that the person administering an oath under Rule 9.86(1) must state in the affidavit which qualification that person has. ²⁷ An affidavit that appears to comply with Rules 9.86(1) and 9.86(2) must be taken to have been properly sworn unless the court requires verification by evidence or other means of any matter relating to compliance with either of those subclauses. ²⁸

Nothing in High Court Rule 9.86 affects the administering of oaths under the Oaths and Declarations Act 1957. ²⁹ Section 10(2) of that Act provides that:

Every Commonwealth representative exercising his functions in any place outside New Zealand may, in that place, administer any oath and take any affidavit, and also do any notarial act which any notary public can do within New Zealand; and every oath, affidavit, and notarial act administered, sworn, or done by or before any such representative shall be as effectual as if duly administered, sworn, or done by or before any lawful authority in New Zealand. ³⁰

The meaning of “Commonwealth representative” is set out in section 2 of the Oaths and Declarations Act. ³¹

5. Volume of evidence

One of the purposes of the Trade Marks Act 2002 is to “reduce costs to applicants and to reduce business compliance costs generally”. ³²  The Commissioner desires to provide for the fair, efficient, and inexpensive determination of proceedings.

Some parties to proceedings file large volumes of irrelevant or unnecessary evidence. This adds unnecessary costs to proceedings for the parties and takes up a disproportionate share of the Hearings Office’s resources.

1. A party’s evidence is expected to be considered, and restraint should be exercised with regards to the volume of evidence needed to establish a party’s case. For example, it should not usually be necessary to file:
   • copies of hundreds of internet pages, without the declarant explaining what they show;
   • copies of trade mark certificates and materials from other jurisdictions that are not relevant to the position in New Zealand;
   • entire statutes, magazines, brochures, manuals, company annual reports and the like – if only one or a few pages are relevant, the front and back covers with the relevant pages should be sufficient;
   • irrelevant evidence so voluminous as to be oppressive, which will almost certainly have costs implications. ³³
   • more than the following (these figures are not targets):
     • Evidence in chief: 300 pages;
     • Evidence in response: 300 pages;
     • Evidence in reply: 150 pages.
2. If there are more than 50 pages in total evidence, the pages should be numbered and bookmarked.

6. Exhibits

Documents may be attached to statutory declarations or affidavits as exhibits.

The Trade Marks Act and Regulations under the Act are silent as to the form of exhibits. In terms of best practice, IPONZ takes guidance from the High Court Rules, ³⁴  which require that each exhibit to an affidavit be:

• Marked with a distinguishing letter or number. IPONZ prefers the letter or number to be at the top of the exhibit.
• Identified by an exhibit note made on the exhibit, and signed by the taker of the affidavit (or declaration), that is the person before whom the affidavit (or declaration) was sworn (or declared). IPONZ considers that the exhibit note should contain the distinguishing letter or number and observes that the exhibit note may be typed directly on the exhibit, or affixed by way of stamp or sticker.
• Annexed to the affidavit (or declaration).

In Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 the applicant argued that exhibits to declarations filed in that opposition proceeding were inadmissible as a result of non-compliance with the High Court Rules because the exhibits were marked only with a distinguishing letter and number, and did not contain exhibit notes signed by the notary public. The Assistant Commissioner did not accept that the exhibits were inadmissible. She observed that while IPONZ often turns to the High Court Rules for guidance where appropriate, those Rules have no direct applicability in this forum. ³⁵  The Assistant Commissioner also commented that, even if the High Court Rules applied, she would not consider it appropriate to rule the exhibits inadmissible in circumstances where the declarations had been in evidence for many months and the opponent was not made aware of the applicant’s objections until shortly before the substantive hearing, leaving no time to rectify them if that was required. ³⁶  The Assistant Commissioner did, however, make it clear that it would have been preferable for the exhibits to have been affixed in the usual manner. ³⁷

A following sample exhibit note for affidavits, which could be adapted readily for statutory declarations, is provided on the New Zealand Law Society’s website:

This is a true copy of the exhibit marked with the letter
‘[A]’ referred to in the affidavit of
[name] sworn [or affirmed] at
[place] this [date] day of [month] [year] before me: [… [solicitor’s] name]
A solicitor of the High Court of New Zealand

7. Cross-examination

The Commissioner’s power to permit cross-examination under s 160(2)(b) of the Act is a discretionary one. ³⁸  The Act and the Regulations under that Act do not provide any guidance in respect of the exercise of the Commissioner’s discretion.

In The Chartered Institute of Management Accountants v New Zealand Institute of Chartered Accountants [2014] NZIPOTM 40 the Assistant Commissioner outlined the following principles relevant to an exercise of the Commissioner’s discretion to permit cross-examination under s 160(2)(b) of the Act: ³⁹

• The overarching principle is whether allowing cross-examination will materially assist the Commissioner in reaching a substantive decision.
  
  
• There is no right to cross-examine.
  
  
• The matters for cross-examination must be relevant to the issues in question in the substantive proceeding. The greater relevance the matters for cross-examination have to the substantive issues, the more likely it is that cross-examination will be permitted. Where the matters for cross-examination are unimportant, cross-examination is likely to be refused.
  
  
• In most cases, cross-examination will only be warranted where:
  
  
  • there is a genuine concern as to the credibility of a witness or the veracity of written evidence, which can only be resolved by cross-examination; or
    
    
  • there is a contradiction between the written evidence submitted, which can only be resolved by cross-examination; ⁴⁰  or
    
    
  • the evidence in question is solely within the knowledge of the declarant (remembering that the evidence in issue must be relevant to the substantive matter).
    
    
• The advantages of cross-examination (including a full and fair hearing) must be weighed against the disadvantages (including delay, cost, and inconvenience to the witness). If the likely benefits of cross-examination are disproportionate to the cost, hearing time, and availability of the witness, cross-examination is likely to be refused. The decision on cross-examination should also take into account the extent to which costs orders can appropriately ameliorate the disadvantages of cross-examination in the case at hand.
  
  
• The earlier the possibility of cross-examination is raised, the more likely it is to be allowed.

This is not an exhaustive statement of the circumstances in which cross-examination should be allowed. ⁴¹  Rather, it is intended to provide guidance on the exercise of the discretion to permit cross-examination. ⁴²

The Assistant Commissioner’s decision in The Chartered Institute of Management Accountants case was appealed to the High Court. ⁴³  One of the grounds of appeal was that the Assistant Commissioner erred in law in determining what the appellant called the “appropriate test” for whether cross-examination should be permitted. In the High Court Brown J held that it is quite clear that the Assistant Commissioner was not purporting to compile an exhaustive list of factors relevant to a decision to permit cross-examination, and consequently His Honour did not consider there was or could be any error by the Assistant Commissioner in the nature alleged. ⁴⁴

The Act does not specify with whom the onus of proof rests in applications for cross-examination. However, it is commonly understood that the party seeking to cross-examine in trade mark proceedings has the onus of establishing that cross-examination should be allowed. ⁴⁵

8. Standard of proof

The standard of proof is the usual civil standard, being the balance of probabilities.  This means that when an Assistant Commissioner is determining any matter under the Act he or she must be persuaded on the evidence that such matter is more probable than not. 

9. Rules of evidence

The rules of evidence that apply in trade mark proceedings under the Act have been considered at some length in cases before the High Court and IPONZ. ⁴⁶

While this is discussed is some detail below, it is now generally accepted that the current position is that all evidence filed in IPONZ trade mark proceedings should comply with the civil rules of evidence, including the Evidence Act 2006. Anything less runs a serious risk that a party’s evidence will be deemed inadmissible, which could prove fatal to that party’s case.

In revocation applications, where an aggrieved person may apply to the Commissioner or the court, ⁴⁷  the Assistant Commissioner is bound by the civil rules of evidence, including the Evidence Act 2006. ⁴⁸

It is less clear what rules of evidence apply when the court does not have co-extensive jurisdiction with IPONZ at first instance. ⁴⁹  For example, in trade mark opposition proceedings. In Royal New Zealand Yacht Squadron v Daks Simpson Group Plc [2002] NZAR 1, Young J stated that: ⁵⁰

General principle favours the inapplicability of the ordinary rules of evidence in such circumstances given the desire of administrative tribunals to function informally.

…

It seems clear … that a tribunal such as the Assistant Commissioner of Trade Marks constituted here is a tribunal which would ordinarily be free to admit what evidence it considered proper, reliable, logically probative and given in accordance with the principles of natural justice.

A different approach was taken by the High Court in Rainbow Technologies Inc v Logical Networks Limited [2003] 3 NZLR 553. In those trade mark opposition proceedings Hammond J upheld the Assistant Commissioner’s decision to reject a declaration containing hearsay. In doing so Hammond J respectfully disagreed with Young J’s approach and stated that: ⁵¹

… the party who has the legal burden of proof on a particular issue also has the evidential burden, and to the appropriate civil standard. To put this shortly, this is an important statutory jurisdiction dealing with valuable property rights. It therefore came as a surprise to me to hear it suggested that the usual rules of evidence do not obtain.

These High Court decisions pre-date the enactment of the Evidence Act 2006, which gives the court more discretion in relation to the admissibility of hearsay evidence.

In Avanti Bicycle Company Ltd v Arabella Pte Ltd [2014] NZIPOTM 14 the Assistant Commissioner referred to these conflicting statements in the High Court and stated: ⁵²

I note that section 5(3) of … [the Evidence] Act [2006] states that the Act “applies to all proceedings ...”, which means that the Act does not expressly apply to a proceeding before a tribunal because of the definitions of proceeding and court. However, I consider that this does not mean that the Evidence Act 2006 does not, or cannot, apply to any evidential issues before this tribunal, or that this tribunal is prevented from being guided by the principles and content of that Act.

In subsequent IPONZ proceedings other Assistant Commissioners have been guided by the principles and content of the Evidence Act 2006 on the basis of the reasons detailed in the Avanti Bicycle case, ⁵³  hence the generally accepted position that this is the standard that now applies in all IPONZ proceedings.

10. Admissibility of evidence

The following have been ruled inadmissible in IPONZ trade mark proceedings: ⁵⁴

• hearsay evidence; ⁵⁵
• non-expert opinion evidence; ⁵⁶
• submissions; ⁵⁷
• evidence of without prejudice communications; ⁵⁸  and
• irrelevant evidence. ⁵⁹

A hearsay statement is one that was made by a person other than a witness; and is offered in evidence at the proceeding to prove the truth of its contents. ⁶⁰  The rules relating to hearsay evidence are set out in sections 16-20 of the Evidence Act 2006.

A statement of an opinion is not admissible in a proceeding, except as provided in sections 24 and 25 of the Evidence Act. ⁶¹  Under section 24 of that Act opinion evidence is admissible if the opinion is necessary to enable the witness to communicate, or the fact-finder to understand, what the witness saw, heard, or otherwise perceived. Section 25 of the Evidence Act relates to expert opinion evidence, which is addressed in a separate section below.

Submissions are not evidence. To the extent that a declaration or affidavit is submission, it is inadmissible. ⁶²

Section 57 of the Evidence Act is intended to replicate the common law privilege, ⁶³  generally referred to as the “without prejudice” rule. It is a rule governing the admissibility of evidence, founded at least in part on public policy encouraging litigants to settle their differences rather than litigate them to the finish. ⁶⁴  Section 57 of the Evidence Act 2006 provides a privilege for parties in a civil dispute in respect of communications and documents made or prepared in confidence and in connection with an attempt to settle a dispute. A privilege conferred by section 57 may be waived only by all the persons who have that privilege. ⁶⁵

Evidence that is not relevant is inadmissible in a proceeding pursuant to section 7(2) of the Evidence Act 2006. Evidence is relevant in a proceeding if it has a tendency to prove or disprove anything that is of consequence to the determination of the proceeding. ⁶⁶

It is the filing party’s responsibility to ensure that their evidence is compliant. If an issue with the form (as opposed to the content) of evidence is identified by a case officer, the filing party will be notified of that issue so that they have an opportunity to correct it.

However, a case officer’s acceptance of the evidence into the proceeding is not a final determination that the form or content of that evidence is admissible. The Assistant Commissioner hearing the matter will determine the admissibility of any evidence filed.

11. Expert evidence

The Evidence Act 2006 defines “expert evidence” as “the evidence of an expert based on the specialised knowledge or skill of that expert and includes evidence given in the form of an opinion”. ⁶⁷  An “expert” is defined in that Act as “a person who has specialised knowledge or skill based on training, study, or experience”. ⁶⁸

Under the Evidence Act 2006 expert opinion evidence is admissible if the decision maker is likely to obtain substantial help from the opinion in understanding other evidence in the proceeding or in ascertaining any fact that is of consequence to the determination of the proceeding. ⁶⁹  Section 25(2) of the Evidence Act provides that an expert opinion is not inadmissible simply because it is about an ultimate issue to be determined in a proceeding or a matter of common knowledge.

As stated, it is unclear whether the Evidence Act is binding in trade mark opposition proceedings. Regardless, that Act provides guidance to Assistant Commissioners when assessing expert evidence.

Evidence that goes beyond the expert’s area of expertise is generally not admissible. ⁷⁰  The only exception to this rule in the Evidence Act 2006 is that expert opinion evidence may be relied on by the decision maker if the fact, which is outside the general body of knowledge that makes up the expertise of the expert, is or will be proved or judicially noticed in the proceeding. ⁷¹

It is important that the expert in an IPONZ proceeding complies with High Court Rule 9.43 regarding the code of conduct for expert witnesses. This Rule provides that:

(1) A party to a proceeding who engages an expert witness must give the expert witness a copy of the code of conduct set out in Schedule 4.
(2) An expert witness must—

(a) state in any written statement of the proposed evidence of the witness served under rule 9.2 or 9.3, or at the time of giving any oral evidence, or in any affidavit containing the evidence of the expert witness, that the expert witness has read the code of conduct and agrees to comply with it:
(b) comply with the code of conduct in preparing any written statement of the proposed evidence of the witness to be served under rule 9.2 or 9.3 or in giving any oral or affidavit evidence in any proceeding.

(3) The evidence of an expert witness who has not complied with subclause (2)(a) may be offered only with the leave of the court.

The expert opinion evidence of experts in IPONZ proceedings has been found inadmissible where the expert’s declaration or affidavit does not include the mandatory statement in High Court Rule 9.43(2)(a). ⁷²

12. Counsel should not give their own evidence

Counsel representing a party at a hearing should not give their own evidence, for example submitting their own statutory declaration as evidence in the proceeding. ⁷³  If Counsel gives evidence they may:

• be precluded from acting in the proceeding;
• be precluded from appearing at a substantive hearing; and/or
• have their evidence deemed inadmissible.

Non-contentious evidence may still be admitted

While there is certainly some risk in Counsel giving evidence, the Commissioner retains discretion to admit Counsel’s evidence if it is “not of a truly contentious nature so as to justify disqualification” ⁷⁴ . For example, the Commissioner may decide to admit evidence that is already publicly available such as IPONZ compliance reports.

Agents who give evidence may not represent their client at a substantive hearing

A lawyer or patent attorney who has given evidence for a party in a proceeding may not then appear as that party’s representative at the substantive hearing. This approach was endorsed by Assistant Commissioner Casey in Shenzen Motoma Power Co Ltd v Motorola Trademark Holdings LLC [2016] NZIPOTM 25:

“Rule 13.5 of the code does not go so far as to prohibit lawyers who represent a party from giving evidence. On the contrary, the restriction relates only to evidence of a contentious nature, and even then does not render the evidence inadmissible: rather, the lawyer is expected to cease to act."  ⁷⁵

So while there is no absolute prohibition on agents giving their own evidence in proceedings, the implications are such that we strongly discourage this practice.

13. Confidential evidence

If a party wishes to file confidential evidence, it must do so by selecting the document type “confidential evidence” when using IPONZ’s online case management facility. Only by selecting this document type will the confidential evidence remain visible only to IPONZ. IPONZ will not make the confidential evidence visible to the other party until:

• the party who filed it has authorised IPONZ to do so, normally once it has received an undertaking from the other party limiting how the “confidential evidence” will be used; or
• the Commissioner directs that the “confidential evidence” be made accessible to the other party, or specified representatives of the other party.

To avoid confusion, parties should file confidential evidence in a separate stand-alone declaration or affidavit that is clearly marked “confidential”. ⁷⁶

The general principle is that evidence cannot be relied on unless it is made available to other parties to the dispute. Usually, this means that it must be made available without restriction, unless the parties have agreed otherwise or there is a direction to that effect. This is consistent with regulation 33 of the Trade Marks Regulations 2003 (Regulations), which provides that a party that files evidence with the Commissioner must, as soon as practicable, send a copy of the evidence to the opposite party and any intervening party.

To help ensure that issues relating to claims to confidentiality can be addressed quickly and efficiently, the relevant party should set out the nature and extent of any claimed confidentiality in a covering letter, including:

(a) Against whom confidentiality is claimed. For example, whether the claim to confidentiality is only against publication by IPONZ; or against the counterparty, but not its experts and/or legal advisers; and

(b) The nature and extent of the asserted confidentiality for each item of evidence, by reference to the relevant factors including those set out in s 69(3) of the Evidence Act 2006 (see below) and anything else the filing party believes is relevant to assessing confidentiality.

If the filing party considers that some of the relevant detail for (b) is commercially sensitive, as much of the relevant grounds should be included as practicable, with the confidential elements included in the party’s confidential evidence.

To remind parties of this requirement, IPONZ’s correspondence setting the deadline for a party’s evidence will include a section alerting the party to these requirements, and reminding the parties of their obligations to genuinely attempt to reach agreement as to how confidential evidence will be treated.

An agreement between the parties as to how confidential evidence will be treated should be reached before a party's deadline for filing their evidence.

If an agreement has not been reached by the evidence deadline, the IPONZ practice for considering “confidential evidence” requests is as follows:

Step 1 If necessary, IPONZ will write to the parties to clarify whether confidentiality is claimed in respect of the whole or part of the document. (This matter should already have been made clear by the filing party.)

Step 2 IPONZ will write to both parties and:

• note that such confidentiality issues are commonplace in IPONZ (and other civil) proceedings, and that the parties should be able to reach an agreement between themselves as to how the confidential evidence is to be treated (particularly where experienced counsel are involved), together with a warning that there will be costs implications if IPONZ needs to intervene to resolve the matter;
• direct that the parties use their ‘best endeavours’ pursuant to regulation 35C to come to an agreement as to how the confidential evidence is to be treated;
• set a deadline of one month for the party who filed the confidential evidence to confirm to IPONZ whether the parties have reached an agreement and to confirm service of the confidential evidence; and
• halt the proceeding under regulation 28(1) to allow for this.

Step 3 If IPONZ is informed that the parties have not agreed on how the confidential evidence is to be treated, or if no response is received to IPONZ’s letter, IPONZ will either:

1. Exercise its discretion by proposing how the confidential evidence will be treated; or
2. Require the parties to attend a case management conference before an Assistant Commissioner, pursuant to regulation 26(1)(a) of the Regulations ⁷⁷

Step 4 If IPONZ exercises its discretion on how the confidential evidence will be treated, a party who considers themselves adversely affected by the decision can request an interlocutory hearing. ⁷⁸

Step 5 If a case management conference is convened, the Assistant Commissioner will give directions as to how the “confidential evidence” is to be treated in the proceeding. ⁷⁹ In most cases costs awards will be made against the unsuccessful party.

Step 6 All parties to a proceeding must comply with the directions given at the case management conference. ⁸⁰ If the Assistant Commissioner’s decision is that the evidence is not confidential, or the restrictions and/or undertakings required by the filing party are not appropriate, that party has the option of either submitting a redacted version of its evidence with the “confidential” aspects removed, withdrawing the evidence from the proceeding in its entirety, or making it available on the terms directed. In the event of non-compliance with a direction given at the case management conference, the provisions of regulations 27(2)-(4) will apply.

The IPONZ practice above is consistent with judicial comments in the following authorities:

In Pernod Ricard NZ Ltd v Lion-Beer Spirits & Wine (NZ) Ltd CIV 2011-404-1664, 1 December 2011 (HC) Allan J observed that it is routine in commercial litigation for confidentiality issues to arise between the parties, however, usually, an accommodation is reached whereby the owner of the information is able to preserve confidentiality whilst affording access on a restricted basis to representatives of the opposing party. ⁸¹

Furthermore, as noted by McKay J in Port Nelson Ltd v Commerce Commission (1994) 7 PRNZ 344 (CA) at 349:

In the vast majority of cases counsel should be able to agree whether or not a document is such as to require special protection, bearing in mind the restrictions on the use of discovered documents which apply in any event. Where there is some genuine point of difference which warrants referral to the Court, then the Judge can decide. Such referrals should be rare where experienced counsel are involved. (Emphasis added).

In InterCityGroup (NZ) Ltd v Nakedbus NZ Ltd (2013) 21 PRNZ 520 the first question Asher J asked was whether the documents in issue were confidential. If they were not, the restrictions on inspection of those documents would have to be removed, and there would be no need to weigh the competing considerations. ⁸² If the information is confidential it is necessary to go on to weigh the various factors to determine whether or not the claims to confidentiality should be set aside. ⁸³

In considering whether it is appropriate to make a direction that evidence should be treated as confidential, and on what terms, the Assistant Commissioner will have regard to the above authorities and take guidance from section 69 of the Evidence Act 2006. Section 69 confers an overriding discretion to protect confidential communications or information from disclosure in a proceeding:

69 Overriding discretion as to confidential information

(1) A direction under this section is a direction that any 1 or more of the following not be disclosed in a proceeding:

(a) a confidential communication:

(b) any confidential information:

(c) any information that would or might reveal a confidential source of information.

(2) A Judge may give a direction under this section if the Judge considers that the public interest in the disclosure in the proceeding of the communication or information is outweighed by the public interest in—

(a) preventing harm to a person by whom, about whom, or on whose behalf the confidential information was obtained, recorded, or prepared or to whom it was communicated; or

(b) preventing harm to—

(i) the particular relationship in the course of which the confidential communication or confidential information was made, obtained, recorded, or prepared; or

(ii) relationships that are of the same kind as, or of a kind similar to, the relationship referred to in subparagraph (i); or

(c) maintaining activities that contribute to or rely on the free flow of information.

(3) When considering whether to give a direction under this section, the Judge must have regard to—

(a) the likely extent of harm that may result from the disclosure of the communication or information; and

(b) the nature of the communication or information and its likely importance in the proceeding; and

(c) the nature of the proceeding; and

(d) the availability or possible availability of other means of obtaining evidence of the communication or information; and

(e) the availability of means of preventing or restricting public disclosure of the evidence if the evidence is given; and

(f) the sensitivity of the evidence, having regard to—

(i) the time that has elapsed since the communication was made or the information was compiled or prepared; and

(ii) the extent to which the information has already been disclosed to other persons; and

(g) … .

(4) The Judge may, in addition to the matters stated in subsection (3), have regard to any other matters that the Judge considers relevant.

(5) A Judge may give a direction under this section that a communication or information not be disclosed whether or not the communication or information is privileged by another provision of this subpart or would, except for a limitation or restriction imposed by this subpart, be privileged.

In the InterCity case, Asher J considered a confidentiality claim in the context of section 69 of the Evidence Act. His Honour observed that section 69 may be interpreted with regard to the relevant common law principles, ⁸⁴ including the leading authority on issues of confidentiality arising in the process of discovery and inspection, referred to above: Port Nelson Ltd v Commerce Commission (1994) 7 PRNZ 344 (CA) at 347 – 348.

High Court Rule 8.2.5, regarding challenges to confidentiality in the context of discovery and inspection, and the commentary relating to that Rule, may also provide guidance in determining confidentiality issues before IPONZ.

14. Evidence out of time

A party to a proceeding must not file evidence after the prescribed time unless the party has applied to the Commissioner of Trade Marks for permission to file it and the Commissioner allows it.

The party applying to file evidence out of time bears the onus of establishing that their application should be granted. ⁸⁵

If such an application is refused, the late evidence will not be taken into account by the Commissioner when determining the substantive proceeding.

Scope of application

An application for evidence out of time must clearly identify the evidence the request relates to. ⁸⁶

It is best practice that the out of time evidence be filed with the application in a separate statutory declaration/affidavit.

IPONZ will not consider an application made under regulation 35 unless the scope of the request is clear.

Legislative framework

Under regulation 34(3) of the Regulations, the Commissioner may allow evidence to be filed out of time only if:

• the Commissioner considers there are genuine and exceptional circumstances that justify filing the evidence; or
• the evidence could not have been filed earlier.

If either of these circumstances exists, the Commissioner has a discretion to admit the evidence. That discretion must be exercised in a fair and reasonable manner having regard to relevant matters and the overall justice of the case. ⁸⁷

Regulation 35 sets out the requirements for an application to file evidence out of time:

35 Application for permission to file evidence out of time

(1) The application for permission to file evidence out of time must—

(a) be in writing; and

(b) be signed by the party applying for permission (P); and

(c) contain the information in subclause (2).

(2) The application must contain the following information:

(a) P’s name and address for service:

(b) if P has an agent, the agent’s name:

(c) the nature of the evidence and whether it is evidence in chief or evidence strictly in reply:

(d) an explanation why the evidence could not have been filed earlier:

(e) any other ground or grounds for making the application.

(3) The Commissioner must notify the opposite party of the application, and the opposite party may make submissions to the Commissioner within the time specified by the Commissioner.

(4) The Commissioner must notify the parties of the decision that the Commissioner intends to make on the application.

(5) The notification must—

(a) specify the ground or grounds on which the Commissioner intends to reject or accept the application; and

(b) advise the parties that either party may require a hearing; and

(c) specify a period of not less than 1 month after the date of notification for a party to require a hearing; and

(d) advise the parties that the Commissioner will decide the application at the end of that period if a party has not required a hearing.

(6) The Commissioner must, as soon as practicable, hold a hearing if the applicant requests it unless regulation 122(3) applies.

If a party is permitted to file evidence in chief out of time, ⁸⁸  the opposite party may file evidence strictly in reply within 1 month after the date of being notified by the Commissioner that the evidence out of time will be admitted. ⁸⁹

Genuine and exceptional circumstances

The leading case on the meaning of the phrase “genuine and exceptional circumstances” is the decision of Lang J in Muir Electrical Company Limited v The Good Guys Limited. ⁹⁰  His Honour considered that whether exceptional circumstances exist is not a matter of judicial discretion but rather a matter of fact requiring judicial assessment. ⁹¹  Any residual discretion may not be exercised until such time as exceptional circumstances have been found to exist. ⁹²

Determining whether “genuine and exceptional circumstances” exist, therefore, involves three separate steps: ⁹³

1. Is there any jurisdictional bar? For example, did the application to file evidence out of time meet the requirements of regulation 35 of the Regulations? ⁹⁴  This is the first precondition.
   
   
2. If the answer to the first question is yes, then, as a matter of fact, do genuine and exceptional circumstances exist? This is the second precondition. Circumstances are “genuine” if they are “authentic, sincere, honest”. ⁹⁵  According to Lang J the phrase “quite out of the ordinary” covers the flavour that Parliament intended the phrase “exceptional circumstances to convey”. ⁹⁶  That threshold may be reached by virtue of a single factor or by the combined weight of all relevant factors. ⁹⁷
   
   
3. If the answers to the first and second questions are both yes, then the final question is whether it is appropriate to exercise the Commissioner’s discretion in the overall circumstances of the case. ⁹⁸

Examples of cases in which genuine and exceptional circumstances have been found to exist include Anchor Foods Pty Limited v New Zealand Milk Brands Limited ⁹⁹  and Wyeth v Sanofi Pasteur. ¹⁰⁰

Evidence that could not have been filed earlier

For the purposes of regulation 34(3)(b) of the Regulations, evidence that could not have been filed earlier must be fresh, or there must be some other comparable circumstances that prevented the evidence being filed. ¹⁰¹  It is not sufficient that a party to the proceeding simply did not manage to complete its evidence in time. ¹⁰²

Cases where it has been found that evidence could not have been filed earlier include those where the evidence sought to be filed relates to matters arising after the deadline for filing the relevant evidence. ¹⁰³

There can be an overlap between a ground under regulation 34(3)(b), evidence that could not have been filed earlier, and a ground under regulation 34(3)(a), where genuine and exceptional circumstances justify the late filing of evidence. That is, there may be genuine and exceptional circumstances which prevented the evidence from being filed earlier. ¹⁰⁴

Discretion

The factors that may be taken into account in considering whether the Commissioner’s discretion to allow the late evidence should be exercised in favour of the applicant, include, without limitation:

• Efficiency and economy of proceedings - there is a strong public interest in ensuring that parties meet statutory deadlines and file their evidence within the prescribed time. ¹⁰⁵  In the Muir Electrical case, Lang J said that the public interest will usually favour the party opposing an application for an extension under regulation 32 (and, presumably, regulation 34 also). ¹⁰⁶  It is in the interests of efficiency and economy that trade mark proceedings are determined expeditiously. ¹⁰⁷
  
  
• Prejudice to the parties – the usual prejudice suffered by the applicant, should its application be refused, is that it would not be able to put forward its best case. ¹⁰⁸  If the application is allowed, the opposing party may be prejudiced if the late evidence results in the hearing being delayed or if that party has less time than usual to consider the late filed evidence prior to the hearing. ¹⁰⁹
  
  
• Full and fair hearing – there is a public interest factor in having the substantive merits of the case investigated fully and properly. ¹¹⁰  In Anchor Foods Pty Limited v New Zealand Milk Brands Limited Assistant Commissioner Glover said: ¹¹¹

In my view, the public interest in ensuring all of the relevant evidence is considered is even stronger in the context of a first instance hearing as opposed to the filing of further evidence on appeal.

There is also authority to the effect that the public interest in having all relevant evidence before the decision-maker is to be given greater weight in the context of trade mark proceedings, which themselves involve matters of public interest. ¹¹²

Costs

Where a party’s application to file evidence out of time is unsuccessful, that party can expect an award of costs to be made against them in accordance with IPONZ’s scale of costs. ¹¹³

Where such an application is successful, however, the successful applicant may not be awarded costs. That was the case in Anchor Foods Pty Limited v New Zealand Milk Brands Limited where the Assistant Commissioner referred to the High Court decision of Holdgate v Holdgate ¹¹⁴  in which the Court observed that under the High Court Rules, “the grant of an indulgence … conventionally is made at the expense of a costs award against the party obtaining the indulgence”. ¹¹⁵  The Assistant Commissioner in Anchor Foods considered that principle should apply to that case and she directed that costs lie where they fall. ¹¹⁶

16. Costs consequences flowing from evidence filed within time

Parties providing evidence in IPONZ proceedings need to be aware that the state of the evidence filed may impact upon costs awarded.

In Green & Good Food Company Limited v Monster Energy Company [2016] NZIPOTM 2 the Assistant Commissioner did not award any costs to the successful party because many of the exhibits attached to a lengthy declaration filed in that proceeding had little or no relevance to the issues to be decided. ¹¹⁷  The Assistant Commissioner provided examples of the irrelevant material and said: ¹¹⁸

This extraneous evidence is unlikely to have had a significant impact on the costs incurred by Green & Good Food Company, given that it did not file evidence or submissions. Nonetheless, the trade mark opposition system is intended to operate as an efficient method of determining disputes, and this objective is undermined by evidence that is insufficiently tailored to the relevant trade marks or issues.

There may also be cost consequences for a party that fails to file any evidence when evidence is clearly required to support grounds pleaded. ¹¹⁹

15. Contesting evidence in reply

If a party to a proceeding seeks to challenge another party’s evidence as not being strictly in reply this should be raised as an evidentiary issue when IPONZ requests further information at the ‘pre-hearing directions’ stage of the proceeding. 

What constitutes evidence in reply will be determined by the Assistant Commissioner, in most cases at the substantive hearing.

Evidence which is not considered to be strictly in reply to evidence in chief will not be taken into account by the Assistant Commissioner when making the determination at the substantive hearing.

Footnotes

• 1 Shorter Oxford English Dictionary (6th ed, Oxford University Press, New York, 2007) vol 1.
• 2 Section 67(a) of the Trade Marks Act 2002.
• 3 Section 160(1) is expressly subject to any regulations but the current Trade Marks Regulations 2003 do not alter the requirement for evidence to be given by statutory declaration or affidavit.
• 4 Section 160(2) of the Act.
• 5 Section 160(5) of the Act.
• 6 Perjury is defined in section 108(1) of the Crimes Act as “an assertion as to a matter of fact, opinion, belief, or knowledge made by a witness in a judicial proceeding as part of his or her evidence on oath, whether the evidence is given in open court or by affidavit or otherwise, that assertion being known to the witness to be false and being intended by him or her to mislead the tribunal holding the proceeding”.
• 8 Section 111 of the Crimes Act 1961.
• 9 Section 9(1) of the Oaths and Declarations Act 1957. Section 9(2) of that Act states that “Despite subsection (1), if a te reo Māori equivalent of the declaration prescribed in Schedule 1 is prescribed by regulations made under section 30A, using that te reo Māori equivalent has the same effect as using the declaration prescribed in Schedule 1”. However, the Oaths and Declarations (Māori Language) Regulations 2004 do not, at present, provide an equivalent of the declaration prescribed in Schedule 1 of the Oaths and Declarations Act.
• 10 Section 9(1) Oaths and Declarations Act 1957. In addition to the persons listed above, a statutory declaration made in New Zealand may be made before “some other person authorised by law to administer an oath”: section 9(1)(f) of the Oaths and Declarations Act. However, if such a person is relied on to administer a statutory declaration, the party filing that declaration may face questions about whether that person is authorised to administer oaths. To avoid a dispute about whether section 9(1) has been satisfied it would be prudent to have a statutory declaration taken before one of the persons expressly listed in s 9(1) of the Oaths and Declarations Act.
• 11 Where the person is authorised by the Minister of Justice that will be by notice in the Gazette: subsections 9(1)(i); 9(1)(ia) and 9(1)(j).
• 12 Rule 4.6 of the Rules of Conduct and Client Care for Lawyers, as set out in the Schedule to the Lawyers and Conveyancers Act (Lawyers: Conduct and Client Care) Rules 2008.
• 13 At [36]-[39].
• 14 AFT Pharmaceuticals Limited v SmithKline Beecham Limited [2014] NZIPOTM 48 at [22]. The Assistant Commissioner also stated that: “I am not suggesting that this is necessary. All that is required by the Oaths & Declarations Act is that the provisions in section 11(1) are met. I simply consider that this substantive compliance with the form of Schedule 1 provides some comfort about the approach taken”: at footnote 13.
• 15 “Commonwealth” is defined in section 2 of the Oaths and Declarations Act as meaning “the British Commonwealth of Nations; and includes every territory for whose international relations the Government of any Commonwealth country is responsible; and also includes the Republic of Ireland as if that country were a member of the British Commonwealth of Nations”.
• 16 Section 11(1) of the Oaths and Declarations Act 1957. For approaches of Assistant Commissioners to what is meant by the word “before” in section 11 of the Oaths and Declarations Act see Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [32]-[40] and Aldi Foods Pty Ltd v Giorgio Armani S.P.A. Milan, Swiss Branch Mendrisio [2013] NZIPOTM 45 at [13]-[16].
• 17 Pursuant to s 2 of the Oaths and Declarations Act 1957, “Commonwealth representative” means “any Ambassador, High Commissioner, Commissioner, Minister, Counsellor, Chargé d'Affaires, Head of Mission, Consular Officer, Pro-consul, Trade Commissioner, or Tourist Commissioner of a Commonwealth country (including New Zealand); and includes any person lawfully acting for any such officer; and also includes any diplomatic secretary on the staff of any such Ambassador, High Commissioner, Commissioner, Minister, Counsellor, Chargé d'Affaires, or Head of Mission”.
• 18 Section 11(3) of the Oaths and Declarations Act 1957.
• 19 Subpart 9 in particular. High Court Rule 9.68(1) provides that Rules 9.69 to 9.74 (under Subpart 9) apply subject to a direction by the court and to any rule affecting a particular kind of proceeding. The High Court Rules can be found in Schedule 2 to the Judicature Act 1908, an online version of which is available at www.legislation.govt.nz.
• 20 Section 5 of the Oaths and Declarations Act 1957.
• 21 Section 4(1) of the Oaths and Declarations Act 1957.
• 22 Section 160(3) of the Trade Marks Act.
• 23 The term “taker” in this Rule means the person before whom an affidavit is sworn or an affirmation is made: High Court Rule 9.68(2).
• 24 High Court Rule 9.85(1).
• 25 High Court Rule 9.85(2).
• 26 High Court Rule 9.85(2).
• 27 McGechan on Procedure (online looseleaf ed, Thomson Reuters) at HR9.86.05 states that “[i]t is to be expected that precise compliance with r 9.86(2) will be required and that the basis for the person’s authority to administer the oath should be very clearly and unequivocally specified”.
• 28 High Court Rule 9.86(3).
• 29 High Court Rule 9.86(4).
• 30 Section 10(3) of the Oaths and Declarations Act 1957 states that “[a]ny document purporting to have affixed, impressed, or subscribed thereon or thereto the seal or signature of any person authorised by this section to administer an oath in testimony of any oath, affidavit, or act being administered, taken, or done by or before him shall be admitted in evidence without proof of the seal or signature being the seal or signature of that person, or of the official character of that person”.
• 31 See footnote 17 above.
• 32 Section 3(b) of the Trade Marks Act 2002
• 33 For example, Green & Good Food Company Limited v Monster Energy Company [2016] NZIPOTM 2 at [67] – [70] and Nutrition Fit 2004, Limited v Monster Energy Company [2018] NZIPOTM 19 at [83.1].
• 34 In particular, High Court Rule 9.77.
• 35 Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [45]. The Assistant Commissioner also noted the provisions of Rule 1.5 of the High Court Rules relating to non-compliance with those rules.
• 36 Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [46]. See also High Court Rule 1.5.
• 37 Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [48].
• 38 New Zealand Institute of Chartered Accountants v Chartered Institute of Management Accountants [2015] NZHC 818, (2015) 113 IPR 571, [2015] 3 NZLR 692, (2015) 22 PRNZ 583 at [38].
• 39 At [75] (footnotes omitted).
• 40 In New Zealand Institute of Chartered Accountants v Chartered Institute of Management Accountants [2015] NZHC 818, (2015) 113 IPR 571, [2015] 3 NZLR 692, (2015) 22 PRNZ 583 Brown J stated “In my view it is not a prerequisite for cross-examination being permitted on contradictions in written evidence that such contradictions “go to the heart of the matter”. The question of the relevance of the matters for cross-examination to the issues in the substantive proceedings is a matter of degree as the Assistant Commissioner recognised in para 75.3” at [75].
• 41 The Assistant Commissioner agreed with the observation of Ferris J in Alliance & Leicester plc’s Application [2002] RPC 29 that “I do not think that it is possible to give an exhaustive statement of the circumstances in which cross-examination should be allowed”: cited in The Chartered Institute of Management Accountants v New Zealand Institute of Chartered Accountants [2014] NZIPOTM 40 at [75].
• 42 The Chartered Institute of Management Accountants v New Zealand Institute of Chartered Accountants [2014] NZIPOTM 40 at footnote 97.
• 43 New Zealand Institute of Chartered Accountants v Chartered Institute of Management Accountants [2015] NZHC 818, (2015) 113 IPR 571, [2015] 3 NZLR 692, (2015) 22 PRNZ 583.
• 44 New Zealand Institute of Chartered Accountants v Chartered Institute of Management Accountants [2015] NZHC 818, (2015) 113 IPR 571, [2015] 3 NZLR 692, (2015) 22 PRNZ 583 at [55].
• 45 The Chartered Institute of Management Accountants v New Zealand Institute of Chartered Accountants [2014] NZIPOTM 40 at [26] citing “Permo” [1985] RPC 597, at 600, as an example.
• 46 For example, Royal New Zealand Yacht Squadron v Daks Simpson Group Plc [2002] NZAR 187 at [16]-[29]; Rainbow Technologies Inc v Logical Networks Limited [2003] 3 NZLR 553 at [44]-[46]; and NextDC Limited v Next Retail Limited [2013] NZIPOTM 2.
• 47 Pursuant to section 65(1) of the Act.
• 48 Royal New Zealand Yacht Squadron v Daks Simpson Group Plc [2002] NZAR 187 at [29], which was a case decided under the Trade Marks Act 1953, and which referred to the Evidence Amendment Act 1980 (No 2), which has since been replaced by the Evidence Act 2006. By analogy, the same principle also applies for other applications where IPONZ has co-extensive jurisdiction with the High Court, including cancellation or alteration applications under section 62 of the Act, invalidity applications under section 73(1) and applications for rectification under section 76(2) of the Act.
• 49 That is where the application under the Act must be made to the Commissioner in the first instance rather than the court.
• 50 Royal New Zealand Yacht Squadron v Daks Simpson Group Plc at [20]. In that case there was an impediment to applying that approach because it was an application for a removal of a trade mark from the register under section 35 of the Trade Marks Act 1953 where the aggrieved person could apply to the court or the Commissioner: at [21].
• 51 At [49].
• 52 At [12] (footnotes omitted). Detailed reasons for this view are set out at [13]-[16] of the decision. See also NextDC Limited v Next Retail Limited [2013] NZIPOTM 2 at [28]-[32].
• 53 Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [50].
• 54 This means those parts of the evidence that are ruled inadmissible will not be taken into account by the Assistant Commissioner in reaching his or her decision.
• 55 For example, Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [56]-[59] (opposition proceeding) and International Consolidated Business Pty Limited v S.C. Johnson & Son, Inc [2014] NZIPOTM 27 at [27]-[28] (revocation proceeding).
• 56 For example, Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [53].
• 57 For example, Underground Espresso Holdings Limited v Union of Orthodox Jewish Congregations of America [2013] NZIPOTM 4 at [12].
• 58 For example, Zero Emission Vehicles Ltd v Alexander Dennis Limited [2014] NZIPOTM 38 at [21]-[30]. See also Green & Good Food Company Limited v Monster Energy Company [2016] NZIPOTM 2 at [61]-[64] and Ingham v Ingham Motor Group Limited [2012] NZIPOTM 5 at [15].
• 59 Avanti Bicycle Company Ltd v Arabella Pte Ltd [2014] NZIPOTM 14 at [17].
• 60 Section 4 of the Evidence Act 2006.
• 61 Section 23 of the Evidence Act 2006.
• 62 Crocodile International Pte Limited v Lacoste HC Wellington CIV 2009-485-2534 and CIV 2009-485-2536, 12 August 2010 at [93].
• 63 In New Zealand Institute of Chartered Accountants v Clarke [2009] 3 NZLR 264 Keane J notes that “… the intent of the New Zealand Law Commission, certainly, was that s 57 was to do no more than replicate the common law: ‘Evidence Reform of the Law’, Report 55, August 1999, volume 1 C247 – 248” at [35].
• 64 Rush & Tompkins Ltd v Greater London Council [1989] AC 1280 (HL) at 1229 per Lord Griffiths, endorsing the description of Oliver LJ in Cutts v Head [1984] 1 All ER 597 (CA) at 605-606 including “… The public policy justification, in truth, essentially rests on the desirability of preventing statements or offers made in the course of negotiations for settlement being brought before the Court of trial as admissions on the question of liability”. Statements made in the course of negotiations include replies to offers and failures to reply: Oliver LJ in Cutts v Head, supra at 605-606.
• 65 Section 65(5) of the Evidence Act 2006.
• 66 Section 7(3) of the Evidence Act 2006.
• 67 Section 4 of the Evidence Act 2006.
• 68 Ibid.
• 69 Section 25(1) of the Evidence Act 2006.
• 70 See for example, Carlton Hire Group Limited v The Ritz-Carlton Hotel Company LLC [2013] NZIPOTM 32 at [19].
• 71 Section 25(3) of the Evidence Act 2006.
• 72 Visitec Australia Pty Ltd v Airwear International Limited [2012] NZIPOTM 6 at [11]-[19]. As stated, the High Court Rules can be found in Schedule 2 to the Judicature Act 1908.
• 73 Evidence Act 2006, section 72(2).
• 74 Greenmount Manufacturing Ltd v Southbourne Investments Ltd (2008) 19 PRNZ 84 (HC), at [20].
• 75 Shenzen Motoma Power Co Ltd v Motorola Trademark Holdings LLC [2016] NZIPOTM 25, at [22].
• 76 Rather than a declaration or affidavit where part of the evidence is claimed to be confidential and part of it is not.
• 77 Notice of the conference will be given to the parties at least 10 working days before the conference in accordance with regulation 26(2) of the Regulations. The parties may attend the conference in person or by a telecommunication link that is acceptable to the Commissioner: regulation 26(3).
• 78 Regulation 123(1) of the Regulations.
• 79 In accordance with regulation 26(1)(b) of the Regulations.
• 80 Regulation 27(1) of the Regulations.
• 81 At [22]. The Pernod Ricard case is not a trade mark proceeding.
• 82 InterCity, supra at [25].
• 83 InterCity, supra at [28]. Asher J accepted that the documents in that case were confidential. Although they were not in the “very confidential” category of, say, a vital chemical formula, they were sufficiently confidential for any competent commercial operator to take vigorous steps to prevent disclosure: at [30]. His Honour concluded that in terms of s 69(2) and (3) of the Evidence Act 2006, the public interest (and legitimate interest of Intercity) in disclosure of the documents was outweighed by the harm that may be suffered by Nakedbus if there were no restrictions: at [38]. Accordingly the application was dismissed.
• 84 At [21].
• 85 McFarlane Fisheries v The Commissioner of Trade Marks [1996] 3 NZLR 437 at 441.
• 86 Hussein v Industria de Diseño Textil, S.A. (Inditex S.A.) [2022] NZIPOTM 28 at [29] and [60].
• 87 Foodstuffs NZ Ltd v Fresh Express Group Pty Ltd [2007] NZIPOTM 40.
• 88 Regulations 34 and 35 of the Regulations.
• 89 Regulation 35A of the Regulations.
• 90 HC Auckland CIV-2009-404-4965, 18 December 2009 at [75] to [76]. The Muir Electrical case was concerned with an application under reg 32 of the Regulations for an extension of time in which to file evidence. The key finding in that case was that the Assistant Commissioner had no power to grant an extension of time for filing evidence if the prescribed time limit had already expired before the extension was sought: at [66]. His Honour went on, however, to consider whether there were “genuine and exceptional circumstances” that justified the extension of time.
• 91 Muir Electrical, supra at [83].
• 92 Muir Electrical, supra at [83] citing R v Rajamani [2007] NZSC 68; [2008] 1 NZLR 723. These comments were obiter, but they have been adopted in a number of subsequent decisions of the Assistant Commissioner.
• 93 New Zealand Paradise Limited v GOJO Industries Inc [2014] NZIPOTM 37 at [59] to [61] citing Epoch Company Ltd v Flowil International Lighting (Holding) B V [2011] NZIPOTM 38 at [10] to [12].
• 94 In New Zealand Paradise Limited v GOJO Industries Inc [2014] NZIPOTM 37 the opponent submitted that the application did not meet the requirements of reg 35(1) of the Regulations, and that accordingly there was no jurisdiction for the Assistant Commissioner to consider whether the applicant should be permitted to file evidence out of time: at [36]. However, in that case the Assistant Commissioner found that the letter from the applicant’s agent, together with the declaration that accompanied it, met the requirements of reg 35 of the Regulations: at [39]. In Muir Electrical there was a jurisdictional bar to an application for an extension of time in which to file evidence, under reg 32 of the Regulations, because the prescribed time period had already expired before the extension was sought: supra at [66].
• 95 Underground Espresso Holdings Ltd v Union of Orthodox Jewish Congregations of America [2012] NZIPOTM 11.
• 96 This comment, at [85], and the following comment from Lang J were obiter, but they have been adopted in a number of subsequent decisions of the Assistant Commissioner: Anchor Foods Pty Limited v New Zealand Milk Brands Limited [2014] NZIPOTM 21 at [80].
• 97 Muir Electrical, supra at [84] and [85] citing Awa v Independent News Auckland Limited [1996] 2 NZLR 184 at 186.
• 98 That is, only if the two threshold tests are met does this third part of the test become relevant: New Zealand Paradise Limited, supra at [60].
• 99 [2014] NZIPOTM 21 at [81] to [86], referring back to Anchor Foods Pty Limited v New Zealand Milk Brands Limited [2013] NZIPOTM 44 regarding “genuine circumstances” in the context of reg 32 of the Regulations: at [32].
• 100 [2008] NZIPOTM 14 at [59].
• 101 Anchor Foods Pty Limited v New Zealand Milk Brands Limited [2014] NZIPOTM 21 at [53].
• 102 Ibid.
• 103 See, for example, Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 at [18] and Foodstuffs NZ Limited v Fresh Express Group Pty Limited [2007] NZIPOTM 40 at 13. In the latter case two of the exhibits that were the subject of the application could not have been filed earlier because the deadline for filing the relevant evidence was 14 August 2006 and those exhibits were dated 29 August 2006 and 31 August 2006.
• 104 Nutri Growth NZ Limited v Heinz Wattie’s Limited [2011] NZIPOTM 10 at [9].
• 105 Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 at [20].
• 106 Ibid citing Muir Electrical at [71].
• 107 Anchor Foods Pty Limited v New Zealand Milk Brands Limited [2014] NZIPOTM 21 at [91].
• 108 For example, Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 at [21] and New Zealand Paradise Limited v GOJO Industries Inc [2014] NZIPOTM 37 at [87].
• 109 Vice versa, if the opposite party received the late evidence well in advance of the hearing it may not be significantly prejudiced if the application is allowed. In Anchor Foods Pty Limited v New Zealand Milk Brands Limited the Assistant Commissioner found that the party opposing the application would not be significantly prejudiced if the applicant were allowed to file the evidence out of time because at the time of the Assistant Commissioner’s decision, the opposing party had had the late evidence for over a year: at [97]. Similarly, in Bluebird Foods Limited v Griffin’s Foods Limited, the Assistant Commissioner did not think the party opposing the application to file evidence out of time would be significantly prejudiced if the application were allowed because the opposing party had elected not to file evidence or to take any other formal steps in the proceeding beyond filing the relevant applications: at [23].
• 110 Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 at [24] referring to Re Jellinek’s Application (1946) 63 RPC 59 at 61.
• 111 [2014] NZIPOTM 21 at [100].
• 112 See, for example, Pioneer Hi-Bred Corn Company v Hyline Chicks [1978] 2 NZLR 50 at 73-74, which related to the filing of further evidence on appeal.
• 113 Provided the opposite party took steps to oppose the application, for example preparation for and attendance at a hearing on the interlocutory evidence out of time issue. See, for example, New Zealand Paradise Limited v GOJO Industries Inc [2014] NZIPOTM 37 at [96].
• 114 HC Auckland CP303/96, 24 September 1996.
• 115 Holdgate v Holdgate HC Auckland CP303/96, 24 September 1996 at 3. See also High Court Rules, r 14.7(g) and the accompanying commentary in McGechan on Procedure.
• 116 Anchor Foods Pty Limited v New Zealand Milk Brands Limited [2014] NZIPOTM 21 at [111].
• 117 At [67]-[70].
• 118 Green & Good Food Company Limited v Monster Energy Company at [69].
• 119 See for example, Xiamen Meitu Technology Co Ltd v Meizu Technology Co Ltd [2015] NZIPOTM 12 at [124]-[127].