Jane Glover Barrister – Mediator – Adjudicator

The secret laws of trade marks part II: specialist goods and services


This post is the second in a two-part series highlighting areas of trade mark law that wouldn’t be easy to find out for the non-expert (Part I, which is about proprietorship, is here)

In Man Truck & Bus AG v Shaanxi Heavy-Duty Automobile Co Ltd [2017] NZHC 2821 Woodhouse J held that the applicant in s 17(1)(a) oppositions involving specialist goods and services will fail automatically if the applicant doesn’t file evidence that confusion or deception is unlikely to arise.  This is pretty dramatic.  It means that parties will lose their substantive legal rights if they don’t know about certain requirements that are only spelled out in the case law.

I find this decision really troubling.  The good thing about statutes is that they are known, they are usually pretty clear, and they are easily available for anyone to find.  The law of trade marks impacts lots of individual New Zealanders and SMEs, so it is important that the law is codified in the Trade Marks Act 2002 and regulations, and that people can find it. 

Worse, I don’t even think it is good law.  Woodhouse J sensibly applied a very well-regarded Court of Appeal decision, Pioneer, but unfortunately the Court of Appeal in Pioneer didn’t explain themselves as clearly as they might have done, leading his Honour astray.

Let’s take a look at what unfolded.

decision in man truck & bus

Woodhouse J noted the 10th proposition in Pioneer, namelythat where the goods are of a kind not normally sold to the public at large, but are ordinarily sold and expected to be sold in a specialist market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential (GE Trade Mark [1973] RPC 297, 321; [1972] 2 All ER 507, 515).

Woodhouse J took this to mean that if an applicant doesn’t provide evidence of this nature in opposition proceedings, then it must fail.  No matter what the substantive merits of the case, the trade mark application will be refused registration in respect of those particular goods and services. 

what’s wrong with this?

First, Pioneer has been around for many years now, and it is cited in nearly every trade mark opposition proceeding, yet it has never been understood in this way. 

Secondly, and much more importantly, the decision in Man Truck & Bus is applied literally, it will lead to manifest injustice.  In fact, it has been applied literally in an IPONZ decision, and it did lead to an outcome that, in my view, was manifestly unjust.[1]  The Assistant Commissioner applied the binding precedent in Man Truck & Bus correctly as she was obliged to do; it was the precedent itself that caused problems. 

Thirdly, in many cases, the requisite evidence is likely to be fairly meaningless, especially if it is given from the applicant itself.  Of course the applicant doesn’t think deception or confusion is likely.  We know this. The applicant already denied it in its pleadings.  Often, therefore, unless it comes from an expert or someone independent (which isn’t necessary),[2] this evidence will really be nothing more than submission.

how did we get here?

At a recent IPSANZ seminar, the presenter, Richard Watts, did an excellent job of explaining what has gone so wrong.  The problem stems from the fact that the proposition from Pioneer seems clear on its face, but when you look at the GE decision that was cited in support of that proposition, actually it isn’t very well expressed at all. 

The issue was analysed beautifully in an earlier IPONZ decision: Hartman Pacific Pty Ltd v Harkness & Young Ltd [2016] NZIPOTM 28.  Assistant Commissioner Alley noted that in the GE case, directly after the statement relied on in Pioneer, Diplock LJ went on to say:

A judge, though he must use his common sense in assessing the credibility and probative value of that evidence [being evidence of persons accustomed to the particular market] is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused.”

This is in contrast, of course, to cases involving goods sold to the general public for consumption or domestic use where the decision-makers are allowed to take into account whether they would themselves be likely to be deceived or confused.

The Assistant Commissioner understood the GE decision to mean that in cases where there is no evidence from persons accustomed to the particular specialist market, the decision-maker is still required to apply the law to the facts and to reach a conclusion on the issue of deception or confusion, but the decision maker cannot take into account his or her own subjective view as to whether he or she would be likely to be deceived or confused.

She noted that this approach was consistent with the commentary in Kerly that the question of likelihood of deception or confusion is one for the court, not the witnesses,[3] and with the decision in New Zealand Breweries v Heineken, in which Turner J held that when assessing the likelihood of confusion:[4]

It is for the Court to decide the question of fact as a matter of impression, having due regard … to any evidence which has been produced. But the question is not one to be decided upon the opinion of the witnesses. It is a matter for the Judge.

Significantly, the Assistant Commissioner concluded that she did not believe that Richardson J intended that a s 17(1)(a) claim could never succeed, or even be determined, where evidence is not filed from someone accustomed to dealing in the relevant specialist market. 

I agree.  Yet unfortunately this is precisely the test that is being applied at present. 


This is an access to justice issue.  Our laws should be open and available to all citizens to be able to find and apply. 

Parties shouldn’t need to know about an obscure High Court decision that says they will fail automatically in trade mark opposition proceedings unless they file evidence on a particular point.  In the words of three-year olds everywhere, it’s just not fair. 

[1] Omega Pharma NV v Omega SA [2018] NZIPOTM 21.

[2] Omega Pharma NV v Omega SA [2018] NZIPOTM 21 at [105].

[3] Kerly’s Law of Trade Marks and Trade Names (15th ed), at 21-003, 18-196 and 21-016.

[4] New Zealand Breweries v Heineken [1964] NZLR 115 at 139.

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Jane Glover

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By Jane Glover
Jane Glover Barrister – Mediator – Adjudicator

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