Jane Glover Barrister – Mediator – Adjudicator

ARE WE DOING IT ALL WRONG? INTERNET EVIDENCE IN TRADE MARK CASES

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I wrote this piece a long time ago, before the world changed. I wondered about swapping it for something corona-ish, especially as there are some fascinating things going on in the patent world in that area right now. For example, there is talk of both patent rights being “undermined” by State march-in rights under existing legislation, and patent rights being increased under proposed new legislation (lengthened periods of protection for new medicines and equipment used to fight covid-19, on the proviso that patent protection only kicks in after the immediate crisis has passed). But, I am feeling covi-whelmed and anyway these issues will probably look clearer in hindsight, with the benefit of distance. Let’s just pretend for a moment that everything is normal.

SO, BACK TO EVIDENCE…

When you’re putting together evidence for, say, a trade mark opposition, do you do any of the following:

  • Include Wayback Machine evidence to show the way in which a mark was used prior to the relevant date?
  • Include evidence of IPONZ/IP Australia trade mark searches to show that lots of traders have registered similar marks? And then carry out Google searches of some of those traders to show that they are actually using the marks?
  • Include historic Facebook and Instagram posts to show that, for example, consumers were aware of a particular product prior to the relevant date?
  • Include historic versions of catalogues and other material from content collation sites such as issuu.com?

I bet you do at least some of these things. Everyone does. But if we do, we should be warning our clients about the risk that such evidence might be ruled inadmissible, especially in Australia. Similarly, we should be assessing our opponents’ evidence and raising objections where appropriate – again, especially in Australia.

Here’s a primer for you regarding the admissibility of internet search results – but remember: all care, no responsibility! Don’t sue me if this is wrong…do your own research!!

wayback machine evidence

In New Zealand, printouts from https://web.archive.org (Wayback Machine) are commonly introduced as evidence in IPONZ proceedings. The Courts have not considered the admissibility of such evidence in any detail, and IPONZ continues to accept it. The weight to be afforded to the evidence is a matter for the Assistant Commissioner to determine in each case. For example, in Australian Council for Educational Research Ltd v ACER Inc [2017] NZIPOTM 2 (at footnote 10), it was accepted that the Wayback Machine search results were at least “broadly reflective” of the position at the relevant time.

The position is very different in Australia. Wayback Machine evidence has been ruled inadmissible in a number of cases, including Rodney Jane Racing Pty Ltd v Monster Energy Co [2019] FCA 923 at [181]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 at [126]; Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474 at [23]; and Voxson Pty Ltd v Telstra Corporation Ltd (No 10) (2018) 134 IPR 99.

iponz/ip australia search results

These are admissible in both countries (in fact, it probably doesn’t even need to be introduced as evidence in order to be used in submission), but be aware that the mere fact of registration does not establish use of a mark and so the probative value of the evidence may be limited. If you can show that there are many marks registered over a long period of time, however, then a Court or Tribunal might infer that at least some of them have no doubt been used. (See Rodney Jane Racing at [195].)

This sort of evidence can also provide some assistance with distinctiveness objections – although again, the probative value is limited as other applicants may have provided evidence of acquired distinctiveness through use, and any differences between the marks could mean that comparisons between marks are unhelpful.

internet search results: third party companies

Given that a trade mark search on its own does not establish use, you might think that the logical next step is to Google some of the applicants to find out about their businesses and how they have used their mark. Could that help?

Unfortunately, if the searches were carried out after the relevant date, the evidence is unlikely to be admissible in either Australia or New Zealand.

What if you happen to have some old search results though, which were carried out before the relevant date? Or what if the “About Us” section of a third party website says something like, “We have been selling our BULBOUS onions throughout New Zealand and Australia since the early 1900s and we have been the leading seller of onions in both countries since that time. We have only ever sold our onions under the mark BULBOUS, and we have never used any other trade marks.”

Well, in New Zealand, I would say it is definitely worth a shot – the evidence may well be admitted, especially if it slides under your opponent’s radar and is unchallenged.

The chances are much slimmer in Australia, though, where there is authority that internet searches of this type comprise inadmissible hearsay: Rodney Jane Racing at [196].

THIRD PARTY CORPORATE facebook and instagram posts

This type of evidence is customarily admitted in New Zealand, and to my knowledge there has been no serious challenge to it on the basis that it comprises hearsay.

This issue is likely to be decided on a case-by-case in Australia, having regard to the three limbs of the business records exception to hearsay in s 69 of the Evidence Act. The Federal Court of Australia has accepted that Facebook posts made by a company are analogous to emails sent to customer distribution lists, and are likely to have been made for the purposes of the business. However, it can be difficult to identify the particular representation(s) made in the posts and whether the representation was made by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact, or was made on the basis of information directly or indirectly supplied by such a person: Rodney Jane Racing at [185].

historic catalogues accessed via content collation sites

In New Zealand, there is no clear guidance on the admissibility of material derived from sites such as issuu.com. It is likely to be treated in a manner similar to Wayback Machine evidence.

In Australia, it is likely to be inadmissible: Rodney Jane Racing at [187].

GOOGLE ANALYTICS results

Finally, let me leave you with some good news! Google Analytics results are likely to be admissible in both Australia and New Zealand: See Pedavoli Fairfax Media Publications Pty Ltd (2014) 324 ALR 166 at [133]-[134]; Rodney Jane Racing at [202]-[203]; and National Mini Storage Ltd v National Storage Ltd [2017] NZHC 1775.

Good luck!

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Jane Glover

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Jane Glover Barrister – Mediator – Adjudicator

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