The importance of providing sufficient evidence in invalidation proceedings
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The importance of providing sufficient evidence in invalidation proceedings

Sponsored by


A recent trademark decision by the Intellectual Property Office of New Zealand (IPONZ) reveals the importance of submitting reliable and probative evidence in invalidation proceedings, even when the invalidation proceedings are undefended by the trademark owner.

The decision confirms that IPONZ regards trademark registrations as important property rights that will not be invalidated unless the applicant makes out a true prima facie case for invalidity.

Case summary


Cong Ty Co Phan Dau Tu Trung Nguyen (the applicant) applied to invalidate trademark registration 1067280 (G7 logo) in the name of Le Hoang Diep Thao (the registered owner) on the grounds that the applicant was the first user and lawful owner of the G7 logo and that the following applied:

  • Use of the G7 logo would be likely to deceive or confuse given the applicant’s common law rights in the G7 logo.

  • The registered owner’s use of the G7 logo is contrary to New Zealand law because it would constitute passing off and would amount to a breach of the Fair Trading Act 1986.

  • The applicant is the true owner of the G7 logo and the registered owner is not entitled to claim to be the owner of the logo.

  • The registered owner applied for registration of the G7 logo in bad faith.

The registered owner did not defend the registration. The assistant commissioner (AC) held that the applicant had not provided sufficient evidence to make out a prima facie case of invalidity of the G7 logo on any of the grounds claimed. Thus, the application for a declaration of invalidity was refused.

Evidence submitted by the applicant

To support its application for invalidity, the applicant provided as evidence:

  • printouts of website pages for (allegedly the applicant’s New Zealand website);

  • representations of packaging containing some form of the stylised G7 logo;

  • seven customer comments relating to its coffee products;

  • references to a physical delivery address for coffee in Te Awamutu; and

  • references to New Zealand telephone numbers.

Evidence not sufficiently reliable or probative

The AC held that the evidence provided did not make out a prima facie case for invalidity and identified the following main evidentiary issues:

  • According to the applicant, was the website of its New Zealand distributor. However, the distributor was not named, and the applicant provided no evidence of any agreement between itself and

  • The applicant did not submit evidence regarding consumer awareness of

  • It is not clear whether the products on were those of the applicant, the registered owner, or a third party.

  • The applicant did not submit any invoices, receipts, sales numbers, advertising spend, number of visitors to the website or other evidence on which the inference of reputation for the G7 logo mark could be made.

  • Although the applicant provided evidence of online customer comments, the comments did not make direct reference to the G7 logo.

  • The statutory declaration did not include a statement that the declarant had personal knowledge of the matters being declared and so had no probative weight.

The AC found that the applicant had not met the onus of establishing a reasonable prima facie case for any of the grounds of invalidity and dismissed the application.

This case reveals the importance of submitting reliable and probative evidence in invalidation proceedings and may serve as a guideline for the type of evidence that will be considered persuasive by IPONZ.

more from across site and ros bottom lb

More from across our site

Lippes Mathias has hired three partners and a counsel from Offit Kurman
External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
Gift this article