Evidence in IPONZ Trademark Proceedings

In intellectual property disputes, a strong argument is only as good as the facts that support it. Whether you are defending a trademark against revocation for non-use or opposing a new application that threatens your brand, the outcome often hinges entirely on the quality and admissibility of your evidence.

The Form of Evidence

In most IPONZ proceedings, evidence is not given orally in a witness box. Instead, it is submitted in writing, primarily through Statutory Declarations or Affidavits. While the Commissioner has the discretion to allow oral evidence or cross-examination, this is rare and typically reserved for cases where credibility is a major issue.

Statutory Declarations

This is the standard format for evidence in New Zealand trademark cases. A statutory declaration is a written statement solemnly declared to be true.

For New Zealand applicants, the declaration must follow the specific form set out in Schedule 1 of the Oaths and Declarations Act 1957. It must be witnessed by an authorized person, such as a barrister and solicitor of the High Court, a Justice of the Peace, or a Notary Public.

While New Zealand law does not prescribe a mandatory form for declarations made overseas, IPONZ strongly prefers that they still follow the New Zealand structure. If a local format is used, it must still contain the substantive elements: the declarant’s name and occupation, a clear statement that the facts are true, the date and place of signing, and the signature of an authorized witness.

Who can witness overseas? In non-Commonwealth countries, this includes a Judge, a Notary Public, or a Commonwealth Representative.

Affidavits

An affidavit is a written statement that is either sworn on oath (using a religious text) or affirmed. Affidavits are strictly governed by the High Court Rules. They must be expressed in the first person and state the deponent’s full name, occupation, and residence. While affidavits are less common than declarations in standard IPONZ proceedings, they are perfectly admissible.

Admissibility

Just because a document is filed does not mean it will be accepted. IPONZ generally applies the civil standard of proof, i.e. the “balance of probabilities” and follows the principles of the Evidence Act 2006.

To ensure your evidence is not struck out, we ensure it avoids common pitfalls. Inadmissible evidence includes:

• Hearsay: Statements made by someone other than the witness, offered to prove the truth of the matter.
• Non-Expert Opinion: Generally, witnesses can only testify to facts they personally perceived, not their opinions (unless necessary to communicate what they saw).
• Submissions: Legal arguments belong in submissions, not in sworn evidence.
• “Without Prejudice” Communications: Correspondence made in a genuine attempt to settle a dispute is privileged and cannot be used as evidence.

Expert Evidence

Sometimes, a case requires specialized knowledge. Expert evidence is admissible if it helps the decision-maker understand other evidence or ascertain a fact. However, the expert must be genuinely qualified and, crucially, must state that they have read and agreed to comply with the Code of Conduct for Expert Witnesses. Failure to include this statement can render the expert’s evidence inadmissible.

Presentation of evidence

A common misconception is that “more is better.” IPONZ explicitly discourages the filing of large volumes of irrelevant evidence, which adds unnecessary costs and delays.

We advise clients to exercise restraint. For example, it is rarely necessary to file hundreds of internet pages without explanation, or entire annual reports when only one page is relevant. As a general guideline (though not a strict rule), evidence in chief should aim for no more than 300 pages. If your evidence exceeds 50 pages, it must be numbered and bookmarked for ease of navigation.

Exhibits attached to your declaration must be clearly identified. Best practice dictates they should be marked with a distinguishing letter or number (e.g., “Exhibit A”) and include an exhibit note signed by the witness.

Managing confidentiality

In trademark disputes, you may need to disclose sensitive commercial data, such as sales figures or marketing spend. IPONZ allows for the filing of “Confidential Evidence”, but this must be handled carefully.

When filing, the document must be explicitly selected as “confidential evidence” in the case management system. However, evidence generally cannot be relied upon unless the other side can see it. The expectation is that parties will negotiate an agreement, often involving an undertaking that only the lawyers and experts, not the commercial competitors, will view the sensitive documents.

If the parties cannot agree on confidentiality terms, IPONZ may halt the proceedings to enforce a resolution, potentially leading to a Case Management Conference and cost implications for the uncooperative party.

Timing is important

Deadlines in trademark proceedings are critical. Filing evidence out of time is not a right, i.e. it is a concession that requires the Commissioner’s permission.

To succeed in filing late evidence, an applicant must prove either genuine and exceptional circumstances exist (e.g., medical emergencies or events completely outside the party’s control); or the evidence could not have been filed earlier (e.g., it relates to facts that arose after the deadline).

The threshold for “exceptional” is high, i.e. it must be “quite out of the ordinary”. Simple delays or managing internal approvals are rarely sufficient excuses.

Our Role as Your Partner

Navigating the evidential stage of a trademark proceeding requires more than just gathering documents, i.e. it requires strategic foresight and strict adherence to compliance standards. Whether it is ensuring your overseas declarations are witnessed correctly or negotiating confidentiality undertakings to protect your commercial secrets, our firm is equipped to manage every step of the process. By preparing focused, admissible, and procedurally correct evidence, we build the strongest possible foundation for your case.

Contact us today for a free consultation.