Monster Energy Company and its wholly owned subsidiary Reign Beverage Company LLC, (collectively, the Opponents) opposed an application for a device mark in the name of Cheng Shin Rubber co., Ltd. The opposed application was in relation to tires and tire tubes for vehicles, as well as a broad range of other vehicle-related goods.[1]
The Opponents relied upon reputation in marks owned by Reign, and four prior registrations in the name of Reign showing a device said to be similar to the Cheng Shin mark.
The Opponent’s evidence of reputation relied upon promotion and use of the mark in the US and online. While their evidence did refer to importation of goods into New Zealand, this was either undated or dated after the relevant date for the application. The period of use was relatively short, commencing only one year prior to the application. It was found that the Opponents’ reputation overseas, such as it was, had not been shown to have extended to New Zealand; accordingly, grounds of opposition relying upon a reputation in New Zealand failed.
In considering the prior Reign registrations, each of which comprised the word REIGN with a graphic device, it was held that the order of inquiry was to determine whether the application was in respect of the same or similar goods or services as the prior marks, and then to determine whether the marks were similar. As the prior registrations were all for drinks and fitness beverages, it was found that Cheng Shin’s vehicle-related goods were not similar to sports drinks (even though both might conceivably be sold through specialist bike shops). Having found this, the Assistant Commissioner held that there was no need to further consider whether the marks were similar, but further held that in any case, any similarity was so low that it was unlikely that the marks would have been found deceptive or confusing.
Having found that the Opponents had not succeeded on any ground, consideration was then given to an award of costs. The Assistant Commissioner noted that the Opponents had withdrawn several grounds of opposition when filing its written submissions. The submissions had also introduced a further Reign trade mark, arguments relating to whether Cheng Shin had a genuine intention to use its mark, and queries regarding the validity of execution of the declaration filed as Cheng Shin’s evidence in answer which had not been raised in the grounds of opposition. The withdrawal of grounds did not occur at an earlier stage in response to an invitation to do so, and no explanation was given as to the late withdrawal of the grounds.
The disparity between the Opponents’ case as pleaded and their case as argued, both in the late withdrawal of grounds and the late addition of fresh arguments, was found to have increased the Applicant’s overall costs in responding to the Opponents’ submissions. It was also noted that whilst it was not normally necessary to file more than 300 pages of evidence in a trade mark opposition, the Opponents’ evidence ran to 474 pages, with no explanation as to why this volume was considered necessary. Further, it was found that the Opponents’ Evidence in Reply was not actually in reply as it made no reference to the Evidence in Answer. Accordingly, a 25% uplift in costs was awarded against the Opponents.
In light of the costs award made, care should be taken when preparing evidence in oppositions, (especially for New Zealand) to ensure that declarations are properly witnessed, but also that evidence in reply is actually responsive to matters raised in the evidence in answer. Parties should avoid filing unnecessary evidence, or attempts to swamp the other party (and Hearing Officer!) with extraneous material. Finally, parties should comply with any directions relating to evidence and pleadings , or provide an explanation if this cannot be done.
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[1] CHENG SHIN RUBBER IND. CO., LTD. v REIGN BEVERAGE COMPANY LLC and MONSTER ENERGY COMPANY [2022] NZIPOTM 15
