statutory declaration

Attorneys can’t witness stat decs for IPONZ

In dismissing Lolicel’s opposition to the registration of SIMPLY DELISH by Stanmar, Assistant Commissioner Rendle excluded evidence witnessed by a patent attorney in Australia because a patent attorney is not authorised to witness a declaration under New Zealand’s Oaths and Declarations Act 1957. The Assistant Commissioner would have dismissed the opposition even if the evidence had been allowed.

Background

Stanmore applied to register SIMPLY DELISH, TMA No. 1163933, in respect of dessert mixes, dessert mousse, dessert puddings and the like in class 30.

Lolicel opposed, claiming use of the mark by Stanmore was likely to deceive or cause confusion and the application was filed in bad faith, respectively, Trade Marks Act 2002 (NZ) ss 17(1)(a) and (2). Lolicel in effect claimed it was the owner of the trade mark and Stanmore was merely its distributor. Stanmar claimed it was the owner and Lolicel was just its contract manufacturer.

Lolicel filed a statutory declaration by its trade mark attorney, a Ms Rimmer, in support of its opposition. Most of the contents of the declaration were based on information provided by Lolicel’s trade mark attorney in South Africa and so were hearsay. Ms Rimmer’s declaration was witnessed in Brisbane Australia by its Australian patent attorney.

Stanmare did not file any evidence in answer but requested a hearing.

(After the hearing was requested, Lolicel sought to file a declaration by one of its employees which “confirmed” the contents of Ms Rimmer’s declaration. As it was filed out of time and an extension of time had not been requested, however, this declaration was excluded from the evidence.)

The declaration was inadmissible

Section 160 of the New Zealand Trade Marks Act requires evidence before IPONZ to be in the form of an affidavit or a statutory declaration in the absence of a direction to the contrary. (There was no direction to the contrary.)

The Rimmer declaration purported to have been made and witnessed under s 11 of the Oaths and Declarations Act 1957 (NZ).

Section 11(1) of the Oaths and Declarations Act 1957 provides:

A declaration made in a Commonwealth country other than New Zealand shall be made before a Judge, a Commissioner of Oaths, a notary public, a Justice of the Peace, or any person authorised by the law of that country to administer an oath there for the purpose of a judicial proceeding, or before a Commonwealth representative, or before a solicitor of the High Court of New Zealand. (emphasis supplied)

The Assistant Commissioner contrasted the specific requirements of s 11 with the terms of s 10 and s 12, the latter of which authorised officers of the armed services of a Commonwealth country, or an ally, to witness both affidavits and statutory declarations.

So it was necessary to show that the patent attorney had authority under the law in Australia to administer an oath for the purposes of a judicial proceeding.

It is clear that a patent attorney can witness a statutory declaration under Australian law – at least for the purposes of matters arising under Commonwealth laws.[1]

The Assistant Commissioner agreed with Stanmore, however, that a statutory declaration was not interchangeable with an affidavit, the truth of which has been sworn on oath or affirmation.

Moreover, it may be noted, s 6(3) of the Statutory Declarations Act 1959 (Cth) provides that the section does not authorise the use of a statutory declaration in a judicial proceeding.

As the declaration was made in Brisbane, the Oaths Act 1867 (Qld) s 16A provides:

(1)A person’s affidavit may be witnessed by any of the following persons without a commission being issued for the purpose—

(a) a justice, commissioner for declarations or notary public under the law of the State, the Commonwealth or another State;

(b) a lawyer;

(c) a conveyancer, or another person authorised to administer an oath, under the law of the State, the Commonwealth or another State;

(d) if the affidavit is witnessed outside Australia—a person authorised to administer an oath under the law of the place in which the affidavit is witnessed;

(e) another person prescribed by regulation for this subsection.

and reg. 4 of the Oaths Regulations 2022 (QLD) prescribes only “a senior police officer”.

The Assistant Commissioner was also referred to s 186 of the Evidence Act 1995 (Cth) which identifies the persons authorised to witness an affidavit for the purposes of court proceedings in the federal jurisdiction as “any justice of the peace, notary public or Australian lawyer”.

As a result, the Assistant Commissioner concluded at [38] – [41] that Lolicel’s Australian patent attorney was not authorised to witness affidavits under Queensland or Australian Federal law. Accordingly, the Rimmer declaration was not admissible in the opposition proceedings before IPONZ.

Hearsay

There was a further problem with the Rimmer declaration. Ms Rimmer had made it on the basis of information supplied by Lolicel’s trade mark attorney in South Africa. In other words, it was hearsay.

The Assistant Commissioner referred to an earlier IPONZ decision, BitFlyer Inc v Coinbase Inc, in which another Assistant Commissioner, recognising that trade mark oppositions dealt with valuable property rights, explained at [36] that hearsay evidence should be given little, if any, weight:[2]

in trade mark oppositions the Assistant Commissioners take the tribunal approach but are guided by and rely on the Evidence Act when assessing the reliability and probity of evidence. A high standard of evidence is expected.

As there was no way of separating statements made by Ms Rimmer from her own knowledge and those which were hearsay, at [52] the Assistant Commissioner concluded that Ms Rimmer’s declaration was inadmissible or of no probative weight.

The Assistant Commissioner appears to have made an exception from this ruling for invoices and emails between the parties as “business records”. At [53], however, the Assistant Commissioner considered these materials, even if admitted, were not adequate to sustain Lolicel’s grounds of opposition.

The substantive grounds

Section 17(1)(a) required the opponent to show that there was an “awareness, cognisance or knowledge” of its mark in the relevant market at the application date to found a likelihood of deception or confusion.

The business records annexed to Ms Rimmer’s declaration did not provide a sufficient foundation for this as they did not address the typical indicators of the extent of use in New Zealand such as sales volumes or advertising and promotional expenditure on the brand in New Zealand.

The s 17(2) ground required Lolicel to show that Stanmore had made its application in bad faith.

At [62], the Assistant Commissioner considered this required Lolicel to prove it was the owner of the trade mark in New Zealand when Stanmore applied to register it and it was unreasonable for Stanmore to have made the application in those circumstances.

While there were email communications between the parties that showed they had dealings with one another before the priority date, these communications left ownership of the trade mark unclear. Accordingly, this ground failed too.

Short comment

As the Trans-Tasman arrangements mean that all Australian and New Zealand patent attorneys are admitted to practise in both Australia and New Zealand, regardless of whether they are based in New Zealand or Australia, precluding patent and trade mark attorneys based in Australia from witnessing statutory declarations for use in IPONZ proceedings seems anomalous as well as inconvenient for businesses.

Lolicel (Pty) Ltd v Stanmar International [USA] Inc. [2023] NZIPOTM 49


  1. Statutory Declarations Act 1959 (Cth) [s 8][s8] and, for prescribed persons, see the Statutory Declarations Regulations 1993 (Cth) reg. 4 and items 107 and 111 of Sch. 2.  ?
  2. Citing Lacoste v Crocodile International Pte Ltd [2014] NZIPOTM 26 at [18].  ?

Attorneys can’t witness stat decs for IPONZ Read More »

Logan J has ruled that documents prepared by a firm of trade mark attorneys in connection with a domain name arbitration are not covered by trade marks attorney privilege. The limits on the scope of “trade marks attorney privilege” is the main takeaway – in particular, Logan J considered that a draft statutory declaration prepared in connection with a UDRP complaint did not fall within the scope of the privilege. There is a warning about how a claim of privilege is made too.

Logan J has ruled that documents prepared by a firm of trade mark attorneys in connection with a domain name arbitration are not covered by trade marks attorney privilege. The limits on the scope of “trade marks attorney privilege” is the main takeaway – in particular, Logan J considered that a draft statutory declaration prepared in connection with a UDRP complaint did not fall within the scope of the privilege. There is a warning about how a claim of privilege is made too.

Titan is suing a Mr Cross and a Dr Harmon alleging that a website they, or one of them, operated – Beware of Titan Garages – infringed its trade mark rights and copyright.

Titan alleges that Mr Cross is a fictitious person.[1]

Titan had previously brought a complaint against Mr Cross under the UDRP unsuccessfully. Mr Cross was represented in that dispute by a firm of patent and trade mark attorneys (the attorneys) and not their associated law firm.

Titan issued a subpoena to the attorneys for production of documents which disclosed information about the identity of Mr Cross. The subpoena allowed redaction of information in the documents protected by client legal privilege (apart from name and contact details). The attorneys produced documents in answer to the privilege in redacted form. After inspection, Titan sought to access the documents in unredacted form. The attorneys objected, citing s 229.

Section 229 provides that a communication, or a record or document, made for the dominant purpose of a registered trade marks attorney providing “intellectual property advice” is privileged in the same way and to the same extent as if made by a lawyer.

The attorneys recognised that the privilege was Mr Cross’ privilege; not theirs. They had made efforts to obtain his instructions, but these were not forthcoming. Mr Cross did not appear at the hearing before Logan J either. As it was Mr Cross’ privilege to waive or not, the attorneys properly maintained the objection.

Why the claim of privilege was refused

In support of the claim, the trade mark attorneys provided an affidavit by the solicitors acting for them in connection with the subpoena. It stated that the deponent was informed the documents:

(1) were part of the trade mark attorney firm’s confidential files; and

(2) contained confidential communications with the attorneys for the purpose of them giving advice in connection with the UDRP complaint.

Logan J considered that the evidence did not rise above “mere assertion” and, in the circumstances of this case, was insufficient to discharge the onus on the person claiming the privilege to prove the privilege applied. His Honour had earlier explained at [9] that:

“the essential issue on a claim for privilege is the purpose for which the document or communication in question was made”: Hancock v Rinehart at [32]. It necessarily follows that the best, though not the only sufficient, source of evidence is the direct evidence of the person whose purpose is in question: Hancock v Rinehart at [32]. Procedural fairness questions in relation to other affected parties intrude in relation to any endeavour to prove the requisite purpose just by an inspection by the Court of the document which is the subject of the asserted privilege. That means that a court ought to be cautious about acting upon an invitation so to do, especially if that invitation is not attended by separate evidence describing the document and the circumstances of its creation….

Logan J did acknowledge that there might be other situations where the circumstances could lead to a different result. His Honour’s approach, however, highlights the risks that can be run by what might be thought to have been a fairly typical form of claim to privilege.

No doubt the attorneys were hampered in preparing the response by Mr Cross’ failure to provide instructions. One might also speculate whether his failure to provide instructions or to appear in circumstances where Titan alleged he was fictitious influenced his Honour’s approach. Titan did not take the point that the affidavit was “on information and belief”, but that is often problematic.[2] Logan J was not invited to inspect the documents and did not consider it appropriate to do so of his own motion. Presumably the point of claiming the privilege would be lost if his Honour had inspected the documents.

The scope of trade mark attorney privilege

Logan J noted that s 229 provides a privilege only in respect of communications and documents made for the dominant purpose of providing “intellectual property advice”.

Relevantly, that was defined as advice in relation to “trade marks” or (one might add) “any related matters”.

His Honour pointed out at [11] – [12] that the privilege was conferred only in respect of the advisory aspect of client legal privilege and did not extend to the litigation aspects.[3] While s 19(2) of the Code of Conduct for Patent and Trade Marks Attorneys 2013 incorporates a duty of confidentiality into the attorneys’ retainer. The terms and scope of that obligation were not co-extensive with the privilege. Consequently at [14]:

As s 229 is presently drawn, it is certainly possible to conceive of anomalous outcomes concerning the existence or otherwise of s 229 privilege with respect to such an arbitral proceeding. For example, it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of “intellectual property advice” in s 229(3). And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights did or did not extend to an Internet domain name seem to fall within the ambit of s 229 privilege – either by virtue of paragraph (b) or (e) of the s 229(3) definition. But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s 229 privilege. Likewise, advice as to what submission ought to be made to demonstrate that the asserted trade mark right did or did not extend to cover a domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission for use in an arbitral proceeding would not. However this may be, the present claim must be determined solely by reference to the scope of the privilege as presently enunciated by Parliament. (emphasis supplied)

If with respect his Honour’s approach is right, there would appear to be potentially quite drastic consequences for the normal practice of attorney firms, and for that matter patent attorneys,[4] in drafting statutory declarations and preparing submissions in contested hearings before the Office such as opposition proceedings.

Of course, given the view Logan J took about the adequacy of the claim to privilege, his Honour’s view on the scope of the privilege is “only” obiter dicta.

And, it must be said, the circumstances were rather unusual given Mr Cross’ failure to provide instructions or defend his claim.

Further, his Honour was not considering the potential application of the privilege to proceedings in the Office. And it might be possible to argue that such proceedings are not what is normally within the scope of litigation privilege rather than “advisory” privilege. Both privilege provisions for trade mark attorneys and patent attorneys draw a clear line between “intellectual property advice” and “court proceedings”. But “arbitrations” under the UDRP are not court cases either, officially being styled administrative proceedings without prejudice to the parties’ rights to litigate in court.

It may be arguable that, given the traditional role of patent attorneys and trade marks attorneys in preparing such documents before the Office (at least), it can be argued that they fall within the scope of the “any related matters” part of the definition of “intellectual property advice”. That may be seen as straining the concept of “advice” too far in the dichotomy Logan J acted under.

On a positive note, Logan J accepted that documents prepared by persons who were not registered trade marks attorneys could benefit from the privilege if prepared under the supervision of a registered trade marks attorney.

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1241


  1. at [4].  ?
  2. For example, Ansell Healthcare Products LLC v Reckitt Benckiser (Australia) Pty Ltd (No 2)
    [2016] FCA 765 at [32] – [35].  ?
  3. Contrast s 118 and s 119 of the Evidence Act 1995.  ?
  4. Patents Act 1990 s 200  ?

Read More »

Patent appeals from the Commissioner

Merck & Co. had successfully opposed Sherman’s application for a patent.  Sherman appealed to the Federal Court from that rejection.  Merck subsequently withdrew from the proceeding in the Court and the Commissioner was added as a party.  The Commissioner filed an affidavit exhibiting a copy of the delegate’s decision upholding the opposition and the declarations which Merck had relied on in the opposition.

The trial judge ruled these materials were inadmissible.  The Full Court (Heerey, Kenny and Middleton JJ) upheld the Commissioner’s appeal against this exclusion of material. 

When an appeal is brought in the Federal Court from the Commissioner (or the Registrar of Designs or of Trade Marks), FCR O 58 r8 provides that evidence before the Commissioner may, with leave of the Court and saving all just exceptions, be admissible in the Court.

Unlike the usual situation in “appeals” of this kind where the parties to the opposition may be relying on the statutory declarations they had filed in the Office, Merck had withdrawn and so the statutory declarations of its witnesses were hearsay – presumably, the Commissioner did not intend, or was unable, to call them.

The Full Court confirmed that the rules of evidence still apply to the evidence sought to be “uplifted” so that, if there are objections such as that the evidence is hearsay, evidence which was before the Commissioner may be excluded before the Court.  However, the Full Court went on to find that both the decision and the declarations were admissible.

The delegate’s decision itself was relevant on two bases (at [37]):

First, the fact that it was made was a fact on which the jurisdiction of the Court depended.

Secondly (and more substantively), the Commissioner’s decision and the reasons for it were admissible before the Court as a form of expert evidence because (unlike the Court) the Commissioner (and the various Registrars) is credited with having some technical expertise which the Court is entitled to take into account.

As the decision itself was relevant and admissible, the Full Court went on to hold that so too were the materials on which it was based.

The weight actually to be accorded to the Commissioner’s decision ultimately would depend on what other evidence was adduced before the Court.

Depending on the extent to which the evidence before the Commissioner and the Court overlaps, the decision-maker’s opinion on these matters carries some weight in the Court’s assessment. Viewed in this way, the decision of the delegate is plainly not inadmissible on the ground that it is irrelevant. 

The Full Court noted that, because the declaratory evidence was admissible on the grounds that it was relevant to an understanding of the Commissioner’s decision, it was admissible for all purposes.  Further, however, the Full Court agreed with Lindgren J’s analysis in Alphapharm v Lundbeck (at [762 – 770]) of why articles cited by an expert were admissible even though hearsay.  

The Court did not address Heerey J’s earlier decision in Cadbury v Darrell Lea (No. 3) in which market survey reports were excluded as ‘double’ hearsay.  It would seem that the difference is that in Sherman and Lundbeck the materials were adopted or referred to by the expert as the basis for the expert opinion.

Commissioner of Patents v Sherman [2008] FCAFC 182.

Patent appeals from the Commissioner Read More »