We refer to previous correspondence in relation to this matter.

Transcription

1 OUR REF: V13010 EJS.PS YOUR REF: Case No. 668 FILED ONLINE 8 June 2015 The Commissioner Intellectual Property Office of New Zealand P O Box 9241 Wellington NEW ZEALAND The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants We refer to previous correspondence in relation to this matter. As the Office is aware, the High Court s judgement in the appeal issued on 23 April The appeal period has passed and we are not aware of any appeal being lodged. We refer also to the Opponent s request of 2 February 2015 to file evidence out of time. We look forward to the Hearings Office s further correspondence in relation to the above matters. Yours faithfully HENRY HUGHES IP Australia and New Zealand Elena Szentivanyi Director CC: Charlotte Henley Kensington Swan PO Box Wellington Reference: NZS137/755 Henry Hughes IP Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.com, Website: Telephone , Facsimile Associated law firm Henry Hughes Law Ltd

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3 IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY CIV [2015] NZHC 818 UNDER the Trade Marks Act 2002 IN THE MATTER BETWEEN AND of an appeal from a decision to permit cross-examination under section 160(1) of that Act NEW ZEALAND INSTITUTE OF CHARTERED ACCOUNTANTS Appellant THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS Respondent Hearing: 23 February 2015 Counsel: H A Cull QC and A James for Appellant D L Marriott and E J Szentivanyi for Respondent Judgment: 23 April 2015 JUDGMENT OF BROWN J [1] The Chartered Institute of Management Accountants (the respondent), sometimes referred to as CIMA, filed trade mark application number on 11 October 2011 for the word mark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS. That application is opposed by the New Zealand Institute of Chartered Accountants (the appellant) on several grounds including that use of the trade mark by the respondent in relation to its goods and services would constitute improper use of terms implying membership of the appellant under s 17(1)(b) of the Trade Marks Act 2002 (the Act) and would be contrary to s 14 of the New Zealand Institute of Chartered Accountants Act NZ INSTITUTE OF CHARTERED ACCOUNTANTS v THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS [2015] NZHC 818 [23 April 2015]

4 [2] The present appeal concerns a challenge to the decision of the Assistant Commissioner of Trade Marks allowing the respondent s application under s 160(2)(b) to permit cross-examination of Mr R B Moon, the general counsel for the appellant. In substantial part the intended cross-examination concerns the issue whether a written agreement (colloquially referred to as the strategic alliance agreement) was executed by the respondent and the appellant in The strategic alliance agreement [3] Reference to the agreement was first made in the statutory declaration of Ms M Heasman dated 4 December 2012 which annexed an unexecuted and undated copy. Ms Heasman explained that, although she had not been personally involved in the development or execution of the agreement, she understood that it was signed in September 2006 by Mr K Wedlock of NZICA and Ms M Wijeyeratne of CIMA NZ. [4] Mr Moon responded to Ms Heasman s evidence in his second statutory declaration of 20 December 2012 stating: 9. Paragraph 14 and exhibit MH-6 of the [Heasman] Declaration attached an undated and unsigned agreement between the Institute and CIMA. Prior to receiving a copy of the [Heasman] Declaration I was not aware of the existence of such an agreement and, in my role with the Institute since 2009, I have never had this Agreement brought to my attention. [5] The general tenor of the document is reflected in recitals D to F in the background section of the document: D. The NZICA and CIMA agree that through engaging in co-operative processes involving communication and the exchange of information, the parties may combine skills and formulate activities, developments and applications in Management Accounting, and enhance and add value to each other s intellectual property in areas of academic, technical and commercial expertise. E. The parties wish to enter into this exclusive agreement to establish a framework for future interaction in relation to Management Accountancy, which may lead to the establishment of specific joint activities including franchising, syndication, research, consultancies, joint educational activities including qualification, promotion, exchange of personnel and equipment (such as software or manuals) and other relevant arrangements.

5 F. A co-ordinating committee will be established to manage and supervise activities carried out pursuant to this agreement. [6] Under the heading Nature of Relationship, the agreement provided that each of the parties agreed that it would make its best endeavours to ensure that the objectives of the Strategic Alliance were achieved. There was provision for the establishment of a Co-ordinating Committee to convene by meeting at least every four months. The agreement was to be for five years commencing on the Commencement Date (which was not defined) but with certain rights of termination within that period. [7] The final provision in the document stated: 10. GENERAL 10.1 This Agreement will not constitute, create, give effect to or otherwise imply a joint venture, partnership or formal business entity of any kind unless separately negotiated and agreed. [8] The parties perception of the significance of an executed strategic alliance agreement differs markedly. The respondent considers that it goes to the very heart of the issues to be determined at the substantive hearing, being evidence that both parties anticipated that they would carry on business in New Zealand in a concurrent and co-operative manner. The appellant submits that the unexecuted copy is silent on the issue of the use of the parties respective trade marks and consequently it cannot assist in the determination of the issues in the substantive trade mark proceeding. Procedural steps prior to the decision under appeal [9] The respondent made an application for a direction under reg 31 of the Trade Mark Regulations 2003 requiring the production by the appellant of a signed copy of the strategic alliance agreement. That application was supported by a second statutory declaration of Ms Heasman which annexed copies of publications in 2006 referring to the fact of an agreement between the two entities. That application was granted by the Intellectual Property Office of New Zealand (the Office) which

6 required the appellant to produce the agreement in a format complying with s 160(1) of the Act. [10] A statutory declaration of Mr Moon (his third) was then filed in which he stated that he had not been able to locate the agreement and he described the steps which he had taken to locate the agreement so as to comply with the order for production. [11] The respondent then filed a further application seeking a direction to produce documents relating to the steps which Mr Moon had taken in his attempt to locate the agreement. That application was resisted by the appellant on the grounds that the agreement was only peripheral to the substantive issue in the proceeding and that the further requested documents were not relevant to the proceeding. The Office refused to issue the further direction. [12] The respondent then filed a request for a direction permitting Mr Moon to be cross-examined. Lengthy correspondence ensued between the parties and the Office which culminated in the Office refusing the request for cross-examination. The respondent then requested a hearing on the decision not to order cross-examination which took place on 26 June The decision under appeal [13] In her judgment dated 3 September 2014 the Assistant Commissioner first recited the procedural history outlined above, noted the practice adopted by the Office to requests for cross-examination and carefully considered several authorities in New Zealand and England on the issue. [14] Her summary of the relevant principles was contained at para 75 which I set out in full given that it is the subject of the first ground of appeal: 75. In Alliance & Leicester plc s Application [2002] RPC 29, Ferris J stated I do not think that it is possible to give an exhaustive statement of the circumstances in which cross-examination should be allowed. I agree with that observation. However, having reviewed relevant authorities, and having considered the approaches adopted by the Office and the parties to this proceeding, I consider it helpful

7 to outline the following principles, which in my view are relevant to an exercise of the Commissioner s discretion to permit cross-examination under section 160(2)(b) of the Act: 75.1 The overarching principle is whether allowing cross-examination will materially assist the Commissioner in reaching a substantive decision There is no right to cross-examine The matters for cross-examination must be relevant to the issues in question in the substantive proceeding. The greater relevance the matters for cross-examination have to the substantive issues, the more likely it is that cross-examination will be permitted. Where the matters for cross-examination are unimportant, cross-examination is likely to be refused In most cases, cross-examination will only be warranted where: there is a genuine concern as to the credibility of a witness or the veracity of written evidence, which can only be resolved by cross-examination; or there is a contradiction between the written evidence submitted, which can only be resolved by cross-examination; or the evidence in question is solely within the knowledge of the declarant (remembering that the evidence in issue must be relevant to the substantive matter) The advantages of cross-examination discussed above (including a full and fair hearing) must be weighed against the disadvantages outlined above (delay, cost, and inconvenience to the witness). If the likely benefits of cross-examination are disproportionate to the cost, hearing time, and availability of the witness, cross-examination is likely to be refused. The decision on cross-examination should also take into account the extent to which costs orders can appropriately ameliorate the disadvantages of cross-examination in the case at hand, particularly if cross-examination turns out to be a waste of time The earlier the possibility of cross-examination is raised, the more likely it is to be allowed. [15] The Assistant Commissioner then noted the exchanges between the Office and the respondent on the Office s requests for sufficiently detailed reasons for cross-examination stating:

8 84. I consider the Office was correct to require the applicant to set out the areas for cross-examination. These do not need to be detailed (categories will probably suffice in most cases) and the applicant certainly does not need to provide the questions for cross-examination. I consider it will be possible in most cases for the applicant to strike an effective balance between the level of detail provided (so as to give sufficient reasons supporting the application for cross-examination) as against the concern that to do so would allow the declarant to prepare and rehearse his or her viva voce evidence. [16] The Assistant Commissioner then proceeded to consider in detail the four reasons which had been advanced for the cross-examination of Mr Moon, namely: (a) Reason 1: production of signed strategic alliance agreement; (b) Reason 2: unsubstantiated factual assertions; (c) Reason 3: contradictions and factual assertions; (d) Reason 4: factual assertions outside the scope of the witness s expertise. [17] Applying the principles which she had discussed, including weighing the advantages of the cross-examination of Mr Moon against the disadvantages, she found in favour of the respondent by a narrow margin : Overall, and on balance, I consider that the decision maker will be materially assisted in reaching a just substantive decision if cross-examination of Mr Moon is permitted. In particular, I consider: The matters for cross-examination, described by the applicant as Reason 1 and Reason 2 (as set out above) are relevant to at least some of the important issues in the substantive proceeding Mr Moon s evidence regarding the steps he look to locate a signed copy of the strategic alliance agreement, and his understanding of whether such an agreement exists is evidence solely within his knowledge. 1 At para 113.

9 108.3 The applicant has shown (narrowly) that it has a genuine concern as to the credibility of Mr Moon, which cannot be resolved other than by cross-examination. Grounds of appeal [18] The notice of appeal dated 30 September 2014 specified the following three categories of grounds of appeal: 2.1 The Assistant Commissioner erred in law in determining (at paragraph [75]) the appropriate test for whether cross-examination should be permitted in proceedings opposing an application for a trade mark under the Trade Marks Act The Assistant Commissioner erred in fact and in law, by permitting cross-examination of Mr Moon in respect of all matters described as Reason 1 and Reason 2, [detailed grounds (a) to (l) were provided]. 2.3 The Assistant Commissioner has erred in law, by permitting cross-examination, in the absence of good or compelling reasons to so permit; where there were no contradictions going to the heart of the matter; and where cross-examination in trade-mark proceedings should be permitted rarely. [19] There is a difference between the parties as to the approach to be followed by this Court in determining the appeal. It is the appellant s position that the right of appeal conferred by s 170 of the Act is a general right of appeal and hence, applying the approach in Austin, Nichols & Co Inc v Stichting Lodestar, the Court has the responsibility of arriving at its own assessment of the merits of the case. 2 [20] By contrast the respondent maintains that a decision under s 160(2)(b) permitting cross-examination is a discretionary decision to which the Austin Nichols approach does not apply. 3 It contends that it is necessary for the appellant to persuade the Court that the Assistant Commissioner erred in the manner recognised in May v May, namely that she had acted on a wrong principle, taken into account irrelevant matters or omitted to factor in relevant matters or made a decision that was plainly wrong Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [5]. Citing Blackstone v Blackstone [2008] NZCA 312, (2008) 19 PRNZ 40. May v May (1982) 1 NZFLR 165 (CA) at

10 [21] Both for the purposes of resolving that difference and with reference to the determination of the first ground of appeal, I consider that it is useful to review particular features of the history of the trade mark legislation. Aspects of the legislative history Evidence and cross-examination [22] Prior to 1953 grants of patents and trade marks were governed by the Patents, Designs, and Trade-Marks Act Section 129(1) and (2) made provision for evidence before the Registrar of Patents Designs and Trade-marks as follows: 129. (1.) Subject to regulations under this Act, in any proceeding under this Act before the Registrar the evidence shall be given by statutory declaration in the absence of directions to the contrary; but in any case in which the Registrar thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by declaration, or allow any declarant to be cross-examined on his declaration. Any such statutory declaration may, in the case of appeal, be used before the Court in lieu of evidence by affidavit, and if so used shall have all the incidents and consequences of evidence by affidavit. Every such statutory declaration shall be exempt from stamp duty. (2.) In any proceeding under this Act before the Registrar he may administer oaths to any witness, and may in the prescribed manner require the attendance of any witness and discovery and production of documents. [23] With minor changes that provision was reproduced in s 68 of the Trade Marks Act which provided in material part: 68. Mode of giving evidence (1) Subject to regulations under this Act, in any proceeding under this Act before the Commissioner the evidence shall be given by affidavit or statutory declaration in the absence of directions to the contrary; but in any case in which the Commissioner thinks it right so to do he may take evidence viva voce instead of or in addition to evidence by affidavit or declaration, or allow any deponent or declarant to be cross-examined on his affidavit or declaration. Any such statutory declaration may, in the case of appeal, be used before the Court instead of evidence by affidavit and if so used shall have all the incidents and consequences of evidence by affidavit. (2) In any proceeding under this Act the Commissioner he may administer oaths to any witness, and may in the prescribed manner require the attendance of any witness and discovery and production of documents. 5 Trade Marks Act 1938 (UK), s 55 was essentially the same as s 68.

11 [24] Although the general tenor of s 96 of the Patents Act 1953 was similar, the formula of s 96 was taken from s 83 of the Patents Act 1949 (UK). I set out s 96 given that it was the provision considered in Beecham Group Ltd v Bristol-Myers Company 6 and Beecham Group Ltd v Bristol-Myers Company (No 2): Evidence before Commissioner (1) Subject to regulations made under this Act, the evidence to be given in any proceedings before the Commissioner under this Act may be given by affidavit or statutory declaration; but the Commissioner may if he thinks fit in any particular case take oral evidence instead of or in addition to such evidence as aforesaid, and may allow any witness to be cross-examined on his affidavit or declaration. Any such statutory declaration may, in the event of an appeal under this Act, be used before the Court instead of evidence by affidavit, and when so used shall have all the incidents and consequences of evidence by affidavit. (2) In any proceedings under this Act before the Commissioner, he may administer oaths to any witness, and may in the prescribed manner require the attendance of any witness and discovery and production of documents. [25] Points of difference in s 96 from former s 129(1) included: (a) shall was replaced by may ; (b) the phrase in the absence of directions to the contrary was omitted; (c) the phrase if he thinks fit in any particular case was added instead of the phrase in any case in which the Registrar thinks it right so to do. [26] Section 160 of the Act is essentially similar to former s 68 of the Trade Marks Act Points of difference include: (a) shall was replaced by must ; (b) the phrase in any case in which the Commissioner thinks it right so to do was omitted. 6 7 Beecham Group Ltd v Bristol-Myers Company [1979] 2 NZLR 625 (SC). Beecham Group Ltd v Bristol-Myers Company (No 2) [1979] 2 NZLR 629 (SC).

12 Provision for appeals [27] The Act made provision in the individual sections for rights of appeal against the relevant decision of the Registrar. There was then a general provision in s 140 providing for the procedure for bringing an appeal and the Court s powers on an appeal: 140. (1.) Every appeal given by this Act against a decision of the Registrar shall be by way of motion, of which notice shall be filed in the Court and served upon the Registrar within twenty-eight days after the day on which the decision appealed against was given. (2.) In any such appeal the Court shall have and may exercise the same discretionary powers as are conferred upon the Registrar. [28] The same legislative technique of specifying particular rights of appeal was adopted in both the Trade Marks Act and the Patents Act Indeed it was the specific right of appeal under s 27(6) of the Trade Marks Act 1953 which was the subject of the Supreme Court s decision in Austin Nichols. [29] In Beecham Group it was argued that the Patents Act 1953 provided no general right of appeal and that such a right existed only under sections which specifically provided for it. 10 Hence it was said that there was no right of appeal from the Assistant Commissioner s decision under s 96(1) refusing to allow cross-examination. In rejecting that contention Wild CJ ruled that where the Commissioner made a decision in opposition proceedings, albeit in the exercise of his discretionary powers under s 96(1), that decision was properly regarded as one made under s 21 (the substantive section dealing with opposition) and not under the procedural s 96. [30] The 2002 Act makes provision for all appeals against the Commissioner s decisions in a single section, s 170, incorporating the notion of an aggrieved person 11 as the requirement for access to the appeal regime. The range of options open to the Court on appeal is detailed in s Section 66. Section 97. Beecham Group Ltd v Bristol-Myers Company, above n 6. Formerly found in s 75(1) of the Trade Marks Act 1953.

13 Beecham Group (No 2) [31] In Beecham Group s appeal against the Assistant Commissioner s refusal to allow cross-examination Davison CJ considered that three fundamental principles were to be taken into account: 12 (a) the nature of the inquiry to be made by the Assistant Commissioner in considering the grant of a patent; (b) the discretionary nature of the Assistant Commissioner s power under s 96(1); (c) the fact that there was no right of cross-examination by the parties: it was there for the benefit of the Commissioner, citing observations of Lord Diplock in General Electric Company s Application. 13 [32] With reference to the large number of instances of cross-examination cited in argument Davison CJ said: 14 I do not find them of any real assistance in coming to a conclusion in this case because the decision given to either allow or to disallow cross-examination will depend on the Commissioner s view as to whether or not he is likely to be assisted by such cross-examination in arriving at his decision whether to grant the patent or not, bearing in mind that his function at this stage is that of screening applications for patents to intercept a patent which would be clearly invalid on one or more of the grounds specified in the Act and to ensure that only patents prima facie valid are on the register. Is a decision to permit cross-examination under s 160(2)(b) the exercise of a discretion? [33] Although a decision to register a trade mark under the 1953 Act was not of the screening nature applicable to patent applications, the generally accepted view of trade mark practitioners was that a decision to allow cross-examination was nevertheless discretionary. The high threshold and the somewhat divergent views of the English Court of Appeal as to the approach under the Trade Marks Act Beecham Group Ltd v Bristol-Myers (No 2), above n 7. General Electric Company s Application [1964] RPC 413 (HL) at 452. At 636.

14 (UK) are conveniently captured in the decision of Mr J M Myall in PERMO Trade Mark: 15 and the question here is: what is the normal Office practice? As I have indicated by reading out section 55, it is beyond dispute that the tribunal within the Office may, in particular cases, take evidence viva voce. In my limited experience this does not happen very often, but I am certainly mindful that the possibility is there. Indeed, I have known it to be agreed at a main hearing that there should be cross-examination, without there being any prior argument of the nature which I have considered today. in my view the questions in this case are quite fundamental to whether use is going to be established or not and I am inclined to think that cross-examination would be positively helpful to the tribunal in coming to a just decision. Argument was addressed to me as to whether previous declarations of the courts should be taken as binding in a decision in this case on its own facts. In particular I was referred to Kidax Ltd. s Applications [1959] R.P.C In the judgment of the Court of Appeal, Lord Evershed, M.R. said (at page 175 line 24): the Registrar will normally deal with these matters on this paper evidence and that a party seeking to supplement such paper evidence either by cross-examining a deponent or otherwise has a substantial onus of proof to discharge. As a matter of administrative necessity, if for no other reason, it would no doubt be impossible for the Registrar to do other than deal with these cases as best he can, by and large, on this written material. I was also referred to a further case taken by the Court of Appeal, that being J Sainsbury Ltd s Application [1981] F.S.R This was a case involving a patent opposition where the case had initially been heard by the superintending examiner and before him cross-examination had not been sought. Lawton LJ., in his decision, which was agreed by his brethren, commenting on the fact that there had not been cross-examination before the superintending examiner, referred to the submissions of Mr. Price, and he commented they (that is the party involved) did not do so (that is apply for cross-examination before the superintending examiner) and the only reason Mr Price gave for not doing so is that in general it is not the practice of practitioners at the Patent Bar to apply to cross-examine deponents before the superintending examiner. In my judgment if that be the practice it is one which is a bad practice because if there is good reason for wanting to cross-examine a deponent then the proper time to do so is before the superintending examiner and not on appeal to the Patents Court. Mr. Watson urged most strongly that I be not swayed by this last expression of the Court of Appeal, in that it was squarely addressed to patents matters which were of a different order to those coming before this tribunal concerning trade marks. With respect, I find that difficult to accept because Lawton LJ. s remarks seem to me to embody a general principle which I 15 PERMO Trade Mark [1985] RPC 597 (TMR).

15 would have thought was as relevant to trade mark proceedings as to patents. Furthermore, section 55 of the Trade Marks Act 1938 specifically provides for evidence viva voce which does extend to cross-examination. The speech of Lord Evershed M.R. in the Kidax case, whether the above extracts I quoted were obiter or not, also seems to point to the exercise of discretion by this tribunal, on its appreciation of the facts, taking into account whether an applicant fro cross-examination has in fact discharged the onus upon him. [34] The English position changed with the advent of the Trade Mark Rules 2000, 16 r 55 providing in material part: 55. (1) Where under these Rules evidence may be admitted by the registrar in any proceedings before her, it shall be by the filing of a statutory declaration or affidavit. (2) The registrar may in any particular case take oral evidence in lieu of or in addition to such evidence and shall, unless she otherwise directs, allow any witness to be cross-examined on his statutory declaration, affidavit or oral evidence. The notable change was the direction to allow cross-examination unless the registrar otherwise directed. [35] That rule was considered and the several authorities carefully reviewed by Ferris J in Alliance & Leicester Plc s Trade Mark Application, 17 the judgment referred to by the Assistant Commissioner at para 75 of the decision under appeal. 18 Observing that r 55(2) was the governing rule which he said clearly gave the registrar a discretion in the matter, Ferris J sought to frame the right test : Having found that Mr Parker applied the wrong test I must consider what is the right one. I do not think it is possible to give an exhaustive statement of the circumstances in which cross-examination ought to be allowed. It seems to me that the words of Lord Evershed in Kidax provide the best guide, that is to say: It is only consistent with the general principles upon which we administer justice here that if a party desires to test the evidence which appears by affidavit or statutory declaration, then prima facie and within reason he should be allowed to do so Made pursuant to the Trade Marks Act 1994 (UK), s 69. Alliance & Leicester Plc s Trade Mark Application [2002] RPC 29. At [14] above.

16 Lord Evershed s ensuing words indicate that he envisaged the qualification within reason as enabling the court to avoid doing something which would be gravely oppressive. One can also envisage cases in which it might be said that there is nothing to test, because the evidence in question manifestly gets nowhere. But I do not think it necessary to show that there is a direct conflict of evidence on a particular point. It would suffice if a declarant says something which would be relevant if true but which the opposite party is not prepared to accept without probing of the kind which is appropriately undertaken in cross-examination. Nor do I consider it a sufficient answer to say that, in the absence of such probing, the tribunal will still be able to make up its mind. [36] Two other features of that judgment may be noted. First, whereas the Court of Appeal in Kidax had accepted that cross-examination within the Registry would be fairly uncommon but an order for cross-examination would be freely made on appeal, Ferris J took a different view saying that if there is to be cross-examination in trade mark proceedings then it is desirable that that should take place in the Registry and not be raised on appeal after there had been a decision on the substantive issues in the case. Secondly, the Judge went on to say: submissions based upon the fact that cross-examination in the Registry is rare and, for administrative reasons, ought to be avoided unless it is really necessary, carry no real weight. The real question, in the Registry as well as on appeal, is whether there ought to be cross-examination at all. [37] The question which I am required to answer is whether the largely similar New Zealand provision in s 160(2) confers a discretion on the Commissioner. I do not consider that the fact that all appeal rights are now collected in a single section of the Act is informative on the point. There is no definition of a decision of the Commissioner and the phrase can include both decisions on substantive issues and mere procedural rulings. While decisions of the Commissioner on substantive matters (such as on oppositions to registration the subject of Austin Nichols) will plainly be subject to general rights of appeal, it does not follow from the fact of a generic appeal provision that merely procedural decisions should be treated differently than previously and prior to the determination in Austin Nichols. [38] There are several factors which lead me to the conclusion that the Commissioner s powers under s 160 should be viewed as discretionary.

17 [39] First, I consider that a decision to allow or refuse cross-examination is appropriately viewed as a part of a tribunal s case management function in relation to which appellate courts have traditionally exercised restraint. As the Court of Appeal observed in Knauf Insulation Ltd v Tasman Insulation New Zealand Ltd: 19 [10] Third, both interlocutory judgments relate to matters of case management which are appropriately resolved by the trial court and nothing raised before us suggests the Judge has adopted the wrong approach. Appellate courts should be, and traditionally have been, reluctant to interfere with an interlocutory decision unless it is such as to effectively resolve the case or has such a substantial impact on the trial that it would be unfair to require the appellant to wait until after the trial to pursue it. That is not the case here. [40] Similarly, in Ashmore v Corporation of Lloyd s which was cited by the Court of Appeal in Knauf, Lord Templeman said: 20 the appellate court should be reluctant to entertain complaints about a judge who controls the conduct of proceedings and limits the time and scope of evidence and argument. So too, where a judge, for reasons which are not plainly wrong, makes an interlocutory decision or make a decision in the course of a trial the decision should be respected by the parties and if not respected should be upheld by an appellate court unless the judge was plainly wrong. [41] I consider that a similar sentiment can be discerned, albeit in the context of a commission of inquiry, in Badger v Whangarei Commission of Inquiry where Barker J said that the law required the Commissioner to comply with natural justice but, subject to that overwhelming requirement, cross-examination was within its power to permit or not. 21 [42] This point has been expressly acknowledged by Geoffrey Hobbs QC sitting as the Appointed Person in Hokochemie GmbH v Hokko Chemical Industry Co Ltd where it was said that in deciding whether to otherwise direct in accordance with r 55(2) the registrar should turn his or her mind to the anticipated advantages and disadvantages of allowing the proposed cross-examination as compared with refusing to allow it. 22 He said: Knauf Insulation Ltd v Tasman Insulation New Zealand Ltd [2013] NZCA 427, (2013) 21 PRNZ 535. Ashmore v Corporation of Lloyd s [1992] 1 WLR 446 (HL) at Badger v Whangarei Commission of Inquiry [1985] 2 NZLR 688 (HC) at 705. Hokochemie GmbH v Hokko Chemical Industry Co Ltd , 9 June 2008 at para 22.

18 This is not only a value judgment, but also a case management decision. [43] In addition it is my view that appellate restraint is appropriate in relation to decisions of the Commissioner under s 160(2) for two reasons in particular: (a) the nature of the hearing process before the Commissioner; (b) the fact that cross-examination is for the Commissioner s benefit. The hearing process before the Commissioner [44] Section 49 provides in material part: 49 Commissioner s determination on opposition The Commissioner must (a) (b) hear the parties, if so required; and consider the evidence; [45] The reference to if so required reflects the variations in the form of hearings before the Commissioner. Regulation 122 provides in material part: 122 Form of hearing (1) A hearing may be (a) (b) (c) a hearing by appearance, that is, the appearance of a party before the Commissioner, whether in person or by telecommunication link acceptable to the Commissioner; or a hearing by submissions, that is, the consideration by the Commissioner of written submissions made by a party without an appearance; or a hearing on the papers, that is, a review of all the documents already submitted in the proceeding. (2) A party may, subject to subclause (3), elect whether to be heard by appearance, by submissions, or on the papers.

19 [46] Also relevant to the mode of hearing are regs 124 and 128(1): 124 Hearing in certain proceedings (1) This regulation applies to the following proceedings: (a) (b) (c) (d) (e) an application for the registration of a trade mark to which a notice of opposition has been filed: an application for the rectification of the register: an application for the revocation of the registration of a trade mark: an application for a declaration that the registration of a trade mark is invalid: an application for cancellation or alteration of registration. (2) After all the evidence has been filed, the Commissioner may, by correspondence or by holding a pre-hearing conference of the parties, determine (a) (b) (c) (d) (e) whether a hearing is required: the form of the hearing: the time for filing submissions: the venue of the hearing: any other matter necessary for arranging a hearing. 128 Conduct of hearing by appearance (1) The Commissioner must determine how a hearing by appearance must be conducted. [47] The Commissioner s power to determine the form and conduct of the hearing echoes the power in s 160(2) which is not confined to permitting cross-examination but includes the power to take oral evidence instead of, or in addition to, evidence in written form, coupled with the necessary related power to administer oaths and require attendance. The degree of control which the Commissioner is empowered to exercise over the nature and conduct of his determination process strongly suggests that his procedural determinations should be viewed as discretionary in nature.

20 Cross-examination for the Commissioner s benefit [48] The second reason concerns the third fundamental principle noted by Davison CJ in Beecham Group (No 2) that the avenue of cross-examination is for the benefit of the Commissioner. 23 The decision to permit cross-examination will turn on the Commissioner s view whether or not he or she is likely to be assisted by cross-examination in the substantive matter for decision. [49] The significance of the element of personal appreciation was acknowledged by the Court of Appeal in Ophthalmological Society of New Zealand Inc v Commerce Commission with reference to identifying if a decision is discretionary: 24 It is by no means easy to define when the process of applying the law to the facts is the exercise of a discretion. The difficulty of this question of characterisation is brought out in the discussion in K J Keith, Appeals from Administrative Tribunals (1969) 5 VUWLR 123, pp The contrast is sometimes described as being between the exercise of a discretion and a finding based on evidence, as in Merck & Co Inc v Pacific Pharmaceuticals Ltd [1990] 2 NZLR 55 (CA) at p 58, a case cited by Mr Brown. A key indication of a discretion is whether the area for personal appreciation by the first instance Court or decision maker is large (Keith at p 135). In the context of the orders and decisions of Masters, whether the interests involved in a particular matter are purely procedural, or concern wider issues of principle in relation to the application of the law to the facts, will also be relevant to whether a decision is discretionary in nature. In the latter type of case it may more readily be seen that ultimately only one view is legally possible, even if there is scope for considerable argument as to what it is. If that is the case the decision maker does not have the margin of appreciation inherent in discretion. (emphasis added) [50] In my view the scope of personal appreciation is substantial where the determinant for allowing cross-examination is whether it would be of material assistance to the Commissioner At [31] above. Ophthalmological Society of New Zealand Inc v Commerce Commission [2003] 2 NZLR 144 (CA) at [37].

21 Did the Assistant Commissioner err in law in determining the appropriate test for whether cross-examination should be permitted in opposition proceedings? [51] As the words in quotation marks indicate, this ground of appeal as framed incorporates the proposition that at para 75 of the decision the Assistant Commissioner made a determination as to the appropriate test to be applied in deciding whether to permit cross-examination. [52] It is important at the outset to recognise that at para 75 the Assistant Commissioner commenced by referring to and expressly agreeing with the observation of Ferris J in Alliance that it was not possible to give an exhaustive statement of the circumstances in which cross-examination should be allowed. 25 The Assistant Commissioner then proceeded to list certain principles, which she said she considered it was helpful to outline, which in her view were relevant to an exercise of the Commissioner s decision under s 160(2)(b). In a footnote to that comment she said: This is not intended to be an exhaustive statement of the circumstances in which cross-examination should be allowed, but rather to provide guidance on the exercise of the discretion to permit cross-examination. [53] In fact the appellant s written submissions recognise that para 75 contained a list of relevant principles but appeared to treat them as if they were an exhaustive statement. It frames its criticism in this way: 4.2 These principles, while broadly on point, fail to capture the point emphasised in several previous decisions that, in the context of a trade mark applications (sic), cross-examination should only be permitted where the evidence sought to be addressed could not have been adduced in writing and where any conflict of evidence could not otherwise be resolved by written evidence in the usual way. 4.3 As the Assistant Commissioner held in DB Breweries, the weight attributed to evidence, points of disagreement, conflicts of evidence, and credibility can and should be resolved on the papers or through submissions at the hearing. 4.4 In the present case, the Assistant Commissioner did not consider whether the evidence sought to be addressed by CIMA in its intended cross-examination of Mr Moon could (or should) have been adduced in CIMA s evidence. By failing to do so she erred in law. 25 At [14] above.

22 [54] Mr Marriott submitted that the only part of the Assistant Commissioner s statement which equated to a test was para 75.1 and that the matters that followed were simply guidelines. He described the respondent s position as being comfortable with what was stated in para 75 so long as it was not elevated to being a test. [55] It is quite clear in my view that, like Ferris J, the Assistant Commissioner was not purporting to compile an exhaustive list of the factors relevant to a decision to permit cross-examination. Consequently I do not consider that there was or could be any error by the Assistant Commissioner of the nature alleged because para 75 was not intended to be a determination of the appropriate test. Did the Assistant Commissioner err in fact and law by permitting cross-examination of Mr Moon in respect of all matters described as Reason 1 and Reason 2? [56] Reason 1 concerned the production (and hence the existence) of an executed strategic alliance agreement. On this issue the Assistant Commissioner said: 88. I accept that the strategic alliance agreement, and Mr Moon s evidence relating to that agreement, has some relevance to the substantive issues in this proceeding. In addition to the relevance claimed by the applicant, it seems to me that Mr Moon s awareness of whether there was a strategic alliance also goes towards the issue of deception and confusion in another respect. If Mr Moon, as the opponent s General Counsel, was not aware of a formal alliance between the parties by virtue of the agreement in issue, then it seems unlikely that the relevant market would be aware of such an alliance. If the relevant market was not aware of a strategic alliance between the parties then it seems to me that a submission could be made that confusion would be more likely. Put another way, if the market was aware the parties were in an alliance, then those in the market would presumably be more likely to appreciate that two different and separate entities exist. [57] The particulars of error alleged by the appellant in respect of Reason 1 are: (a) the matter described as Reason 1, the production of a signed strategic alliance agreement, is a collateral issue, namely one of discovery (not of contradiction), which does not go to the heart of the matter nor to the substantive issue for determination and does not provide a good and sufficient reason to permit cross-examination on a collateral issue.

23 (b) (c) (d) (e) (f) (g) permitting cross-examination to test a witness s credibility on this discovery issue is contrary to ss 7 and 8 Evidence Act 2006 and an error of law, because such evidence is irrelevant, unfairly prejudicial and inadmissible. the evidence sought to be adduced by cross-examination, is intended to be used for an illegitimate or collateral purpose, namely, to injure a witness s character, reputation and standing. the Office had refused the applicant s request for further discovery and the applicant had neither appealed or reviewed that decision. the onus on the applicant to substantiate its claim has been reversed; namely, the applicant, not the opponent, must discover and produce the document on which it relies to make its application and to produce evidence that such a purported alliance agreement was actually signed in 2006 and was not a mere draft. the onus of explaining the whereabouts of a document, (on which the applicant relies but which has not been found), has been placed on the opponent, contrary to legal principles and practice. the contents of the alliance agreement does not advance the interpretation contended for by the applicant; is irrelevant to the substantive issues and has no probative value. [58] Reason 2 concerned unsubstantiated factual assertions. Only one example was given by the respondent, namely Mr Moon s statement that members of the public (and older members) sometimes referred to the respondent as the Institute of Chartered Accountants. Interestingly the Assistant Commissioner herself drew attention to a further unsubstantiated statement: 95. I consider that the way in which the opponent s marks are referred to, or used, in the relevant market is relevant to the extent to which, if at all, that market will be confused by registration of the opposed mark under section 17(1)(a) of the Act. 96. The applicant declined to specify any of the other examples of unsubstantiated factual assertions, which it says exist. The reason the applicant gave for declining to do so was its forewarned is forearmed submission (discussed above). It seems to me, however, that another statement from Mr Moon which is largely unsubstantiated, is his statement that he understands that any co-branded publications released in New Zealand by both the applicant and the opponent included the word CIMA together with the opposed mark, rather than the opposed mark being used in isolation. I consider that this statement is relevant to the central issue of confusion in the market.

24 [59] The particulars of error alleged by the appellant in respect of Reason 2 are: (h) (i) (j) (k) the matter described as Reason 2, the unsubstantiated factual assertions, namely, that members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants and that any co-branded publications included the word CIMA together with the opposed mark, are assertions which can be otherwise addressed by written evidence and further documentary evidence. the opponent s witness has expressed an opinion, based on his experience, which can be either accepted or rejected, or given such weight as the Commissioner decides, but is not a compelling reason to permit cross-examination. when the assertion about co-branded publications was not contradicted by the Applicant. the assertion is neither central to the case or of such gravity, to warrant cross-examination as to the witness s credibility or veracity. [60] The argument for the appellant places heavy reliance on contentions that the strategic alliance agreement is not relevant to the substantive issues and that cross-examination about the existence of an executed agreement must therefore be viewed as being pursued for a collateral purpose, namely being primarily to attack Mr Moon s credibility generally. As is apparent from her decision, the Assistant Commissioner did not share that view. [61] She accepted that the matters about which the respondent wished to cross-examine Mr Moon were relevant to the substantive issues in the proceeding. She found in favour of permitting cross-examination of Mr Moon because on balance she considered that the decision maker would be materially assisted in reaching a just substantive decision if cross-examination of Mr Moon was permitted. She thus applied what she had identified in para 75.1 as the overarching principle. [62] Because the appellant approached the appeal on the footing that it was a general appeal and that therefore the Austin Nichols approach should be followed, the thrust of its argument was generally to the effect that the Court should reach a different conclusion on the issue from the Assistant Commissioner and that the decision was accordingly wrong. For example, after reviewing the principal issues in the substantive proceeding, the appellant s submissions stated that the Assistant

25 Commissioner was wrong to conclude at para that Reasons 1 and 2 were relevant to at least some important issues in the proceeding. [63] However in view of my finding that the power to permit cross-examination under s 160(2)(b) is a discretionary decision, I am required to approach the appeal by reference to the May v May principles. 26 For the benefit of non-lawyers reading this judgment, it may be helpful to elaborate upon the constraints on an appellate court on appeal from a discretionary decision. In Novartis New Zealand Ltd v Aktiebolaget Hassle in the context of an appeal against a decision to grant an interlocutory injunction the Court of Appeal said: 27 That was a decision made in the exercise of Potter J s discretion. It would not be appropriate for us to disturb it unless we were persuaded that the Judge had acted on a wrong principle or had failed to take into account some relevant matter or taken account of some irrelevant matter or was plainly wrong: May v May (1982) 1 NZFLR 165 at p 170; Harris v McIntosh [2001] 3 NZLR 721 at para [13]. A similar approach is taken in England, where in Hadmor Productions Ltd v Hamilton [1982] 1 All ER 1042 Lord Diplock said at p 1046 in the principal speech: An interlocutory injunction is a discretionary relief and the discretion whether or not to grant it is vested in the High Court Judge by whom the application for it is heard. On an appeal from the Judge s grant or refusal of an interlocutory injunction the function of an appellate Court, whether it be the Court of Appeal or your Lordships House, is not to exercise an independent discretion of its own. It must defer to the Judge s exercise of his discretion and must not interfere with it merely on the ground that the members of the appellate Court would have exercised the discretion differently. The function of the appellate Court is initially one of review only [64] I first observe that the Assistant Commissioner s decision is a thoughtful and thorough decision which reviews the relevant authorities in some detail. The decision endeavours to address the appellant s position although the Assistant Commissioner suffered from the disadvantage that the appellant was not represented at the hearing and elected not to file any formal written submissions. 28 Hence it was necessary for the Assistant Commissioner to discern its position from the informal submissions in correspondence with the Office At [20] above. Novartis New Zealand Ltd v Aktiebolaget Hassle [2004] 2 NZLR 721 (CA) at Noted at para 17.

26 [65] That disadvantage notwithstanding, the decision recognises a number of the appellant s arguments including that the requested cross-examination was an attempt to relitigate the respondent s request for production of the signed strategic alliance agreement. Indeed the Assistant Commissioner accepted the appellant s argument in declining to permit cross-examination of Mr Moon in respect of Reason 4, namely factual assertions outside the scope of the witness s expertise. However the decision also notes that the appellant did not provide any submissions or evidence on the costs directly associated with Mr Moon attending the substantive hearing for cross-examination. [66] I do not consider that it can be said that in reaching her decision to permit cross-examination on Reasons 1 and 2 and to decline to allow it on Reason 4 the Assistant Commissioner either acted on a wrong principle or was plainly wrong. Although the several matters listed as particulars to ground of appeal 2.2 were not cast as such, I have considered whether any of them could provide a basis for asserting that the Assistant Commissioner failed to take into account some relevant matter or took account of some irrelevant matter. [67] In the main those particulars are the reflex of the appellant s contention that the subject matter of the proposed cross-examination is not relevant to the substantive issues: for example items (b) and (g). Consequently it is said that the cross-examination relates to a collateral issue or is for a collateral purpose: for example items (a) and (c). It is also contended that seeking from an opponent its copy of an alleged document amounts to a reversal of the onus on the applicant: items (e) and (f). [68] Although these points are not referred to expressly in the decision, possibly because the appellant elected not to be represented at the hearing, in my view consideration of them was a necessary incident of the Assistant Commissioner s decision that the matters for cross-examination are relevant to at least some of the important issues in the proceeding 29 and that there is a real risk that the respondent 29 At para

27 will be hamstrung in the substantive submissions it can make if it does not challenge Mr Moon s credibility. 30 [69] The Court of Appeal in Novartis concluded: 31 [54] We would not be justified in disturbing the order made by Potter J on an assessment of the overall justice in a finely balanced situation. It has not been shown that her careful judgment contained any legal error or any misunderstanding of the facts, nor has she reached a plainly wrong conclusion. [70] That conclusion is entirely apt for the circumstances of the decision under appeal where, having weighed the advantages of cross-examination of Mr Moon against the disadvantages, the Assistant Commissioner concluded that cross-examination should be allowed by a narrow margin. 32 I do not consider that there is any error in the Assistant Commissioner s decision of the nature which would entitle me to set aside the decision and exercise an original discretion of my own. Did the Assistant Commissioner err in law by reserving the respondent s position in respect of Reason 3? [71] Reason 3 concerned alleged contradictions in Mr Moon s factual assertions. The only example advanced related to whether the appellant had consented to use of the opposed mark. While accepting that there did not appear to be any extrinsic material settling the dispute on that point which, she said, would usually point towards cross-examination being allowed, the Assistant Commissioner concluded: 101. However, my concern with regard to this reason for cross-examination is the extent to use the opposed mark is relevant to the substantive issues in dispute in this proceeding. It is unclear whether the applicant considers that consent is relevant to the likelihood of deception or confusion on the basis that the opponent would not have consented to use of the opposed mark if it considered that such use was likely to confuse or deceive the relevant market. There are no pleadings addressing the issue of consent directly. For instance, the applicant has not pleaded that there has been honest concurrent use under section 26(b) of the Act. If I direct that cross-examination of Mr Moon is permitted (on the basis of the applicant s other reasons) then I consider that At para 109. Novartis New Zealand Ltd v Aktiebolaget Hassle, above n 27. At para 113.

28 cross-examination on this particular issue should only be allowed at the hearing if the applicant can show how the consent issue is relevant to the matters in question in the substantive proceeding. [72] In effect the Assistant Commissioner deferred ruling on this aspect of the requested cross-examination until the respondent had demonstrated the relevance to the substantive dispute of the proposed subject of cross-examination. I do not see any error in this approach. Indeed, on the state of the pleadings as described above, I consider that the prudent course was to require the respondent to first demonstrate how the consent issue was relevant. To have ruled one way or the other without clarification on that point would have risked doing an injustice to one party or the other. Did the Assistant Commissioner err in law by permitting cross-examination: in the absence of good or compelling reasons to so permit; where there were no contradictions going to the heart of the matter; where cross-examination on trade mark proceedings should be permitted rarely? Absence of good or compelling reasons [73] The first and second of the above matters reproduce the allegations in appeal ground 2.2(a), albeit confined to an error of law. In support of the first matter, it is submitted that there was no good or proper reason to order cross-examination because the matters for cross-examination are not relevant to the substantive proceedings. The Assistant Commissioner viewed the matter differently. I do not consider that she was in error in doing so. Contradictions going to the heart of the matter [74] I infer that the derivation of the contradictions going to the heart of the matter approach is the decision in DB Breweries Ltd v Society of Beer Advocats, Inc. 33 It was the applicant s submission in that matter that there were major contradictions between the written evidence of the parties that could not be resolved other than by cross-examination of a deponent, which contradictions were said to go 33 DB Breweries Ltd v Society of Beer Advocats, Inc [2011] NZIPOTM 19.

29 the heart of the principal issue in the proceeding. In his general observations concerning cross-examination, the Assistant Commissioner referred to a contradiction between written evidence which could not be resolved as one scenario where cross-examination should be allowed. However he did not comment on the degree of significance of the contradiction. [75] In my view it is not a prerequisite for cross-examination being permitted on contradictions in written evidence that such contradictions go to the heart of the matter. The question of the relevance of the matters for cross-examination to the issues in the substantive proceeding is a matter of degree as the Assistant Commissioner recognised in para Indeed that point appeared to be accepted by the appellant in quoting that subparagraph in its written submissions at para 5.3. Cross-examination should be permitted rarely? [76] The Assistant Commissioner s non-exhaustive list of principles makes no reference to the statement which has been frequently made in the past 34 that cross-examination will be sparingly or rarely permitted. Although Mr Marriott inferred that the Assistant Commissioner did not share that view, Ms Cull s helpful Overview document maintained that cross-examination should be rarely permitted. [77] I made reference above 35 to the comment of Ferris J that submissions based on the fact that cross-examination is rare and ought to be avoided unless it is really necessary carry no real weight. Of course that observation needs to be read in the light of what might be described as the presumption in favour of permitting cross-examination in r 55(2) of the Trade Mark Rules 2000 which then applied. 36 [78] However even in the context of s 160(2)(b) I venture to suggest that applications for permission to cross-examine in proceedings before the Commissioner are likely to be a little more frequent in the future than has traditionally been the case. One reason for this is the degree of recognition Comparatively recently in DB Breweries Ltd v Society of Beer Advocats, Inc above n 33. At [36]. Noted by the Assistant Commissioner at fn 52.

30 nowadays given to the rule in Browne v Dunn 37 which is codified in s 92 of the Evidence Act 2006 which is in turn referred to in r 9.15 of the High Court Rules. [79] In that connection Richard Arnold QC sitting as the Appointed Person in Pan World Brands Ltd v Tripp Ltd (EXTREME Trade Mark) observed: 38 Where, however, evidence is given in a witness statement filed on behalf of a party to registry proceedings which is not obviously incredible and the opposing party has neither given the witness advance notice that his evidence is to be challenged nor challenged his evidence in cross-examination nor adduced evidence to contradict the witness s evidence despite having had the opportunity to do so, then I consider that the rule in Browne v Dunn applies and it is not open to the opposing party to invite the tribunal to disbelieve the witness s evidence. Despite this, it is not an uncommon experience to find parties in registry hearings making submissions about such unchallenged evidence which amount to cross-examination of the witness in his absence and an invitation to the hearing officer to disbelieve or discount his evidence. I consider that hearing officers should guard themselves against being beguiled by such submissions (which is not, of course, to say that they should assess evidence uncritically). [80] The same sentiment appears in the Court of Appeal s judgment in Aqua Technics Pool and Spa Centre New Zealand Ltd v Aqua-Tech Ltd where the comment was made that if the appellant had wanted to challenge a certain witness s evidence it should have asked that he present himself for cross-examination. 39 The Court said that it is unfair to challenge the veracity of a witness when the challenge has not been put to him as it could have been. [81] On an application for leave to appeal those observations were challenged as involving a wrong approach because, it was said, it is not customary to have cross-examination before the Commissioner. However in its decision declining leave, the Supreme Court stated that it did not consider that the Court of Appeal was doing anything more than stating the obvious, namely that it may be difficult to controvert assertions of fact by a witness without cross-examining the witness Browne v Dunn (1894) 6 R 67 (HL). Pan World Brands Ltd v Tripp Ltd (EXTREME Trade Mark) [2008] RPC 2 at The Appointed Person noted that a court is not obliged to accept a witness s evidence in the absence of cross-examination if it is obviously incredible, citing National Westminster Bank plc v Daniel [1993] 1 WLR Aqua Technics Pool and Spa Centre New Zealand Ltd v Aqua-Tech Ltd [2007] NZCA 90 at [65]. Aqua Technics Pool and Spa Centre NZ Ltd v Aqua-Tech Ltd [2007] NZSC 52 at [5].

31 [82] The appellant contended that it was the Supreme Court who had observed that cross-examination before the Assistant Commissioner was not customary or at best quite rare. I agree with Mr Marriott that the Supreme Court was not itself opining on the frequency of cross-examination. The relevant passage in its leave judgment reads: That is said to have been a wrong approach because it is not customary to have cross-examination before the Assistant Commissioner. (The proposed new evidence, if received, would establish that cross-examination is possible but quite rare.) [83] The view which the appellant attributed to the Supreme Court was said to accord with the approach in judicial review proceedings which it was submitted should apply here by analogy. However the reason why leave to cross-examine is rarely granted in judicial review proceedings is because of a rule of practice reflected in s 10 of the Judicature Amendment Act 1972 and grounded in the nature of judicial review as a relatively simple, untechnical and prompt approach. 41 [84] The dicta in the Aqua Technics litigation was noted by the Assistant Commissioner in her decision 42 together with the judgment of Simon France J in Zoggs International Ltd v Sexwax Incorporated. 43 The Judge there accepted that it was not open to the Assistant Commissioner to resolve an evidential conflict against Zoggs in the absence of cross-examination of the Sexwax witness. [85] A second reason for potentially more frequent cross-examination is the inclusion in s 17(2) of bad faith as an absolute ground for refusal to register a trade mark. Sumpter 44 suggests that bad faith allegations where written evidence is in conflict would seem an appropriate circumstance to allow cross-examination, noting that it was described as highly desirable in DAAWAT Trade Mark. 45 Similarly in the Alliance case 46 Ferris J considered that it was essential that the opportunity Association of Dispensing Opticians of New Zealand Inc v Optician Board [2000] 1 NZLR 158 (CA) at 163. At Zoggs International Ltd v Sexwax Incorporated [2013] NZHC Paul Sumpter, Trade Marks in Practice, 2 nd ed 2011, LexisNexis at p 242. DAAWAT Trade Mark [2003] RPC 187. Noted by the Assistant Commissioner at para 58. At [35] above.

32 should be available to put to the witness the facts and matters relied on as disclosing bad faith. [86] However even where allegations of bad faith are made, cross-examination will by no means invariably be permitted. The English experience as reported in Kerly is instructive: 47 One might have expected allegations of bad faith to have resulted in a greater recourse to discovery or disclosure of documents and/or cross-examination. However, in practice, where triable issues of bad faith have arisen in oppositions, many have been decided without cross-examination. In at least some cases, it is apparent that the need for cross-examination was avoided by the applicant simply failing to respond at all in his evidence to issues of bad faith raised in the opponent s evidence which called for a response. The absence of cross-examination seems to have caused no difficulty in most cases, since the outcome is normally apparent. However, in more complex or finely balanced situations, an allegation of bad faith may fail unless precise allegations have been pleaded in the statement of grounds, spelt out in the written evidence or are put to the applicant in cross-examination. [87] For these reasons it may be that more applications will be made than has previously been the case. 48 I do not consider that it is useful to proffer some new epithet in an endeavour to convey the anticipated frequency of cross-examination in the future. The fact is that cross-examination will only occur when, in applying the overarching principle 49, the Commissioner is persuaded that she or he will be materially assisted in the task of reaching a substantive decision. [88] The Assistant Commissioner did not err in the manner contended in the third aspect of ground of appeal James Mellor and others Kerly s Law of Trade Marks and Trade Names (15 th ed, Sweet & Maxwell, United Kingdom, 2011) at At para [34] the Assistant Commissioner suggested that cross-examination was rare in part because applications for cross-examination were rarely made. Para 75.1 of the Assistant Commissioner s decision at [14] above.

33 Disposition [89] For the reasons above the appeal is dismissed. The respondent is entitled to costs on a 2B basis with disbursements as approved by the Registrar. Solicitors: Kensington Swan, Wellington Brown J

34 OUR REF: V13010 EJS.PS YOUR REF: Case No. 668 FILED ONLINE 13 March 2015 Intellectual Property Office of New Zealand P O Box 9241 Wellington NEW ZEALAND The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants 1. We refer to the Opponent s request of 2 February 2015 to file the fourth statutory declaration of Richard Brandon Moon dated 23 December 2014 as evidence out of time. Introduction 2. The Trade Marks Act 2002 and Trade Marks Regulations 2003 prescribe the process, order and time line for filing evidence. 3. Outside the prescribed timetable, further evidence is allowed only in two limited circumstances: that the evidence could not have been filed earlier or that there are genuine and exceptional circumstances which justify the filing of the evidence. 4. As explained below, the evidence the subject of this application clearly could have been filed earlier. Equally clearly, this is not a case where the alleged genuine and exceptional circumstances relied upon prevented the filing of the evidence earlier. Rather, the Opponent s application to file evidence out of time is an attempt to bolster its case with evidence that could and should have been filed during the prescribed period. Relevant Law 5. It is common ground that the relevant provisions for filing evidence out of time are found in Regulation 34 of the Trade Marks Regulations Regulation 34 provides that evidence may be filed out of time if there are genuine and exceptional circumstances that justify filing the evidence, or if the evidence could not have been filed earlier. If either of these circumstances exist, the Commissioner has a discretion to admit the evidence. Henry Hughes IP Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.com, Website: Telephone , Facsimile Associated law firm Henry Hughes Law Ltd

35 6. The current form of regulation 34 (as amended in 2013) is set out below, the pertinent wording is underlined: 34 Evidence out of time (1)This regulation and regulation 35 apply to the following proceedings: (a) an opposition to registration of a trade mark: (b) an application for rectification of the register: (c) an application for revocation of the registration of a trade mark: (d) an application for a declaration of the invalidity of the registration of a trade mark: (e) an application for cancellation or alteration of a registration. (2) A party to a proceeding must not file evidence after the prescribed time unless the party has applied to the Commissioner for permission to file it and the Commissioner allows it. (3) The Commissioner may allow the evidence to be filed only if (a) the Commissioner considers that there are genuine and exceptional circumstances that justify filing the evidence; or (b) the evidence could not have been filed earlier. (4) In this regulation, prescribed time means, in relation to a proceeding to which this regulation applies, the time prescribed in these regulations by which the evidence or type of evidence must be filed. 7. As the Opponent in these proceedings, NZICA has already had the opportunity to file evidence in support of its opposition (filed 8 October 2012) and to file evidence in reply to the Applicant s evidence (filed 20 December 2012). The opposition has been in order for a Hearing since January Therefore, the prescribed time by which the evidence must be filed expired 8 October 2012 (the time frame allowed for filing evidence in chief) or at the latest 6 January 2013 (the time frame allowed for filing evidence in reply, assuming that the evidence can be characterised as evidence in reply). The evidence could have been filed earlier 9. It is apparent that the evidence set out in the fourth Moon declaration could have been filed earlier as all of the exhibited extracts are dated earlier than 8 October The Opponent has already had an opportunity to file the evidence as evidence in chief. 10. Regulation 34(3)(b) does not apply. There are not genuine and exceptional circumstances that justify filing the evidence 11. We understand that the Opponent relies solely upon Regulation 34(3)(a) for the admission of the evidence on the basis that there are genuine and exceptional circumstances that justify filing the evidence. 12. The provisions relating to the filing of evidence out of time are significantly different to the provisions under the Trade Marks Regulations 1954 for filing further evidence. Regulation 42 stated that: No further evidence shall be left on either side, but in any proceedings before the Commissioner he may at any time, if he thinks fit, give leave to either the application of the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.

36 13. The allowance of further evidence under the 1954 Regulations was purely a matter of discretion. 14. The different wording utilised in Regulation 34 mirrors changes made to the general extension of time provision in Regulation 32 which contains a requirement that the Commissioner must be satisfied that there are genuine and exceptional circumstances that justify the extension: 32 Commissioner may extend time (1) The Commissioner may, except where these regulations stipulate that time must not be extended, extend the time specified by these regulations for a step to be taken for a period not exceeding 3 months if the Commissioner is satisfied that the extension is reasonable in the circumstances. (2)The Commissioner may, except where these regulations stipulate that time must not be extended, extend the time specified by these regulations for a step to be taken for any period (whether or not in addition to the period specified in subclause (1)) specified by the Commissioner if the Commissioner is satisfied that there are genuine and exceptional circumstances that justify the extension. (3) In extending the time for a step to be taken, the Commissioner may stipulate the terms and conditions on which the extension is granted. (4) If more than 1 extension is granted under subclause (1) in relation to a step to be taken, the total period of those extensions must not exceed 3 months. i) Onus of proof 15. The Opponent bears the onus of establishing that the application for permission to file the evidence out of time should be granted 1. ii) At what time should the genuine and exceptional circumstances exist? 16. The most crucial time is the prescribed time for filing evidence 2. The prescribed time for the Opponent to file its evidence in chief was 8 October The circumstances should cause the evidence not to be filed at the appropriate time 3. In other words, the circumstances should exist at the prescribed time. 18. There is no evidence that the genuine and exceptional circumstances relied upon existed at the prescribed time. Indeed, the stated trigger for the application for filing evidence out of time was the Opponent s request for cross-examination filed on 20 September iii) Meaning of genuine 19. Circumstances are genuine if they are authentic, sincere, honest The Opponent s sole submission on this point is that the exceptional circumstances discussed above are authentic, sincere, and honest, and are therefore genuine circumstances as required under Regulation McFarlane Fisheries v The Commissioner of Trade Marks [1996] 3 NZLR 437 at New Zealand New Paradise Limited v GOJO Industries Inc [2014] NZIPOTM 37 at [83] 3 Foodstuffs NZ Limited v Fresh Express Group Pty Limited [2007] NZIPOTM 40 (28 November 2007) at page 12 4 Opponent s attorney s letter of 2 February 2015 at Underground Espresso Holdings Ltd v Union of Orthodox Jewish Congregations of America [2012] NZIPOTM 11; New Zealand New Paradise Limited, above FN 2 at [72] 6 Opponent s attorney s letter of 2 February 2015 at 4.11

37 21. Mr. Moon does not address this issue in his declaration. 22. The trigger for the filing of the evidence out of time was the Applicant s request of 20 September 2013 that the Commissioner permit cross-examination of Mr. Moon 7. More specific details of the unsubstantiated factual assertions, to which the Applicant objects and which Mr. Moon s fourth declaration seeks to substantiate, were disclosed in our letter to the Office of 6 December The Commissioner s decision allowing cross-examination issued on 3 September Yet, Mr. Moon s fourth declaration addressing this issue was not sworn until 23 December 2014 and not filed until 2 February The delay in seeking to file the evidence should be a relevant consideration in determining if the circumstances justifying the filing of the evidence are genuine. The circumstances of the late attempt to file additional evidence were not addressed in Mr. Moon s declaration An attempt to file evidence out of time, that could have been filed earlier had the party elected to file such evidence earlier is potentially a tactical rather than genuine circumstance 9. iv) Meaning of exceptional 25. In considering the change of wording in the 2003 regulations to include a requirement that there be genuine and exceptional circumstances that justify the extension the High Court found as follows: I consider that the wording used in the current regulations permits several conclusions to be drawn. First, Parliament clearly intended to tighten up the requirement that parties take prescribed steps in a timely manner. One of the methods by which it has sought to achieve that objective is by significantly limiting the power of the Commissioner to grant extensions of time. The Commissioner no longer has an express power, as it formerly did, to grant an extension of time under Regulation 32 where the time for taking a step has expired. The Commissioner is also prohibited from exercising the general power under Regulation 32 where the Act or regulations prohibit the Commissioner from granting an extension beyond a prescribed period. Finally, the Commissioner can only grant an extension where there are genuine and exceptional circumstances that justify the extension being granted The Supreme Court has found that whether exceptional circumstances exist is not a matter of judicial discretion. Rather, it is a matter of fact requiring judicial assessment. 11 While acknowledging that the precise meaning to be applied to the term exceptional circumstances can often present difficulty, the Court considered that the phrase quite out of the ordinary aptly captures to flavour that Parliament intended the phrase to convey 12. v) Are there exceptional circumstances that justify filing the evidence? 27. The Opponent relies upon the Commissioner granting the Applicant s request for crossexamination as being the exceptional circumstances justifying the filing of evidence out of time as such an occurrence is highly unusual, out of the ordinary, should be permitted rarely and is 7 Opponent s attorney s letter of 2 February 2015 at Sambbasivam v Chetty and Ramanathan HC WN CIV (17 May 2011) at [25] 9 Ibid, see discussion at [18] [29] 10 Muir Electrical Company Pty Limited v The Good Guys Group Limited HC AK, CIV December 2009, per Lang J, at [53]. At the time of this decision Regulation 32 read: The Commissioner may, if satisfied in a particular case that there are genuine and exceptional circumstances that justify an extension of time, extend the time specified by these regulations for a step to be taken, except where these regulations stipulate that time must not be extended. 11 R v Rajamani [2008] 1 NZLR 723; applied in Muir Electrical Company, above FN 9 at [83] 12 Muir Electrical Company, above FN 9 at [84], [85]

38 not a standard occurrence 13. As such, the Opponent alleges that permitting cross-examination is itself an exceptional circumstance That a party to a proceeding may request production of documents and/or cross-examination are specifically provided for by the Trade Marks Act Section 160(2) and (4) grant the Commissioner a broad discretion in relation to the mode of evidence in proceedings including that the Commissioner may permit a deponent or declarant to be cross-examined on his or her affidavit or declaration and may in the prescribed manner require the attendance of any witness and discovery and production of documents. In this regard, we refer also to the process for production of documents as prescribed by Regulation 31. Thus, the Commissioner has specific powers to allow the procedural matters the subject of the Applicant s request. 29. The Applicant s request for cross-examination is an interlocutory matter. The determination of interlocutory matters occurs on a regular basis, whether that be by way of a separate Hearing, as in this case, or as a preliminary issue at the substantive hearing. An interlocutory matter is not highly unusual, out of the ordinary, or the sort of matter that should be permitted rarely. 30. The Opponent has already had two opportunities to put its best case forward. It chose to include in its evidence unsubstantiated factual assertions. The deponent in question is a lawyer. The Opponent is being advised by external counsel. The deponent, Opponent and Opponent s attorney would be aware of the risk of including unsubstantiated factual assertions in their evidence. 31. The Commissioner has found that exceptional circumstances envisages circumstances that are outside of the control of the person who is seeking to file evidence out of time and that caused the evidence not to be filed at the appropriate time 15. There were no circumstances outside the Opponent s control during the prescribed time for filing evidence that caused the evidence not to be file at the appropriate time. 32. That the Opponent has reviewed its case in advance of the substantive Hearing and sought to bolster its case with evidence that was missing from the evidence as filed does not constitute exceptional circumstances that justify filing the evidence. The tactical late filing of evidence that should have been filed as evidence in chief has been frowned upon by the High Court and not admitted under Regulation 34(3)(a) The Opponent s application cannot be granted as the circumstances of the case are not exceptional 17. Commissioner s discretion 34. The Opponent relies upon the combination of factors set out in it application for filing evidence out of time and submit that the overall circumstances of the case justify the exercise of the Commissioner s discretion 18. The Opponent also relies upon the public interest and an allegation that the evidence will assist the Assistant Commissioner While there may be a strong public interest factor in having the substantive merits of the case investigated fully and properly, the Commissioner must not take into account discretionary factors 13 Opponent s attorney s letter of 2 February 2015 at 4.4, 4.5, 4.6, Opponent s attorney s letter of 2 February 2015 at Foodstuffs NZ Limited, above FN 3 at page Sambbasivam, above FN 8, see discussion at [18] [29]; see also Foodstuffs NZ Limited, above FN 3 at pages Muir Electrical Company, above FN 10 at [85] 18 Opponent s attorney s letter of 2 February 2015 at Opponent s attorney s letter of 2 February 2015 at 5.2

39 (such as the public interest, prejudice, and fairness to the parties) unless and until genuine and exceptional circumstances have been established The Commissioner s discretion is only relevant as a third step in a three step test: Therefore, the analysis involves three, separate steps. The first step is to determine whether or not there is any jurisdictional bar (such as, in the case of applications under reg 32 of the Regulations, the fact that the prescribed time period had already expired). The second step is to determine, as a matter of fact, whether there were genuine and exceptional circumstances. Only if those two threshold tests are met does the third part of the test become relevant, i.e. whether it is appropriate to exercise the Commissioner s discretion in the overall circumstances of the case In the absence of genuine and exceptional circumstances justifying the filing of the evidence, it is not permissible for the Commissioner to take into account matters such as the importance of the evidence, the respective prejudice to the parties or the public interest 22. The grounds put forth by the Opponent in support of is plea for exercise of the Commissioner s discretion in its favour are not of any relevance in the absence of the existence of exceptional circumstances. Conclusion 38. The evidence could have been filed earlier. The Opponent has already had two chances to file evidence in these proceedings. 39. There were no exceptional circumstances outside the Opponent s control during the prescribed time for filing its evidence. 40. In the absence of exceptional circumstances, there is no basis for exercise of the Commissioner s discretion to admit the evidence out of time. 41. We submit that there is no basis for the admission of the evidence out of time under Regulation We look forward to the Commissioner s ruling in this matter. Yours faithfully HENRY HUGHES IP Australia and New Zealand Elena Szentivanyi 20 New Zealand New Paradise Limited, above FN 3 at [58], [89] [90]; see also Sambbasivam, above FN 8 at [20]; and Muir Electrical Company, above FN New Zealand New Paradise Limited, above FN8 at [59] [60] 22 New Zealand New Paradise Limited, above FN8 at [91]

40 13 February 2015 HENRY HUGHES IP LIMITED PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We refer to the opponent s request to file evidence out of time of 2 February We note the request was copied to the applicant s counsel and seek the applicant s comments before making a determination on the request. We ask for the applicant s comments by 13 March The proceeding remains in a halt. If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs

41 2 February 2015 Filed via online correspondence The Commissioner of Trade Marks Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 Application for permission to file evidence out of time Proceeding no Introduction 1.1 We act for the New Zealand Institute of Chartered Accountants (the Institute ) in the opposition to trade mark application no in the name of the Chartered Institute of Management Accountants ( CIMA ) proceeding no. 668 (the Opposition Proceedings ). The Institute s address for service in these proceedings is set out below: Kensington Swan Level 9, 89 The Terrace Wellington New Zealand 1.2 The Institute filed its evidence in chief in the Opposition Proceedings on 8 October 2012, including a declaration by Mr Richard Brandon Moon dated 8 October We now attach a fourth statutory declaration of Richard Brandon Moon (the Declaration ) dated 23 December 2014 as evidence in support of the Institute s evidence in chief in the Opposition Proceedings and apply for permission to file the Declaration as late filed evidence under Regulation 34 of the Trade Marks Regulations (the Regulations ). The reasons supporting the Institute s request are set out below. 2 Relevant law 2.1 Regulation 34 of the Regulations states that: 34 Evidence out of time (1) This regulation and regulation 35 apply to the following proceedings: (a) an opposition to registration of a trade mark: (b) an application for rectification of the register: (c) an application for revocation of the registration of a trade mark: (d) an application for a declaration of the invalidity of the registration of a trade mark: (e) an application for cancellation or alteration of a registration. (2) A party to a proceeding must not file evidence after the prescribed time unless the party has applied to the Commissioner for permission to file it and the Commissioner allows it. (3) The Commissioner may allow the evidence to be filed only if (a) the Commissioner considers that there are genuine and exceptional circumstances that justify filing the evidence; or (b) the evidence could not have been filed earlier

42 (4) In this regulation, prescribed time means, in relation to a proceeding to which this regulation applies, the time prescribed in these regulations by which the evidence or type of evidence must be filed. 3 Factual Background 3.1 To date, each party to the Opposition Proceedings has filed its evidence in chief, and the Institute has filed evidence in reply (Mr Moon s second declaration dated 20 December 2012). In addition the Opposition Proceedings have involved two interlocutory matters. These have delayed the Opposition Proceedings from proceeding to a substantive hearing, and are discussed below. 3.2 The first interlocutory matter was CIMA s request for the Institute to produce a document, namely a signed copy of the strategic alliance agreement between the Institute and CIMA executed in 2006 (the Draft Agreement ). The Office granted CIMA s request and required that the Institute produce a signed version of the Draft Agreement. Mr Moon then filed a statutory declaration (Mr Moon s third declaration dated 23 April 2013) stating that he had not been able to locate a signed version of the Draft Agreement despite taking steps to comply with the order for production of a signed version of the Draft Agreement. Mr Moon also described the steps taken to locate a signed version of the Draft Agreement. In response to Mr Moon s declaration, CIMA filed a further application for a direction to produce documents relating to the steps taken to locate a signed version of the Draft Agreement. The Office was not prepared to issue a further direction. 3.3 The second interlocutory matter, to which this application for late-filed evidence relates, was triggered by CIMA s request dated 20 September 2013 that the Commissioner permit crossexamination of Mr Moon at the substantive hearing. After lengthy correspondence and multiple requests from the Office, CIMA identified four reasons why it said cross-examination of Mr Moon should be permitted. One of the reasons that CIMA put forward as a basis for cross-examining Mr Moon was that CIMA alleged that Mr Moon had made unsubstantiated factual assertions. The Institute opposed the application to cross-examine Mr Moon. On 18 February 2014, the Office refused the request for cross-examination on the basis that crossexamination before the Commissioner is only available when truly justified and where the evidence cannot otherwise be given in writing. 1 On 3 April 2014 CIMA sought a hearing on the Office s decision. 3.4 This hearing took place on 26 June In a decision released on 3 September 2014, the Assistant Commissioner found in favour of CIMA by what she described as a narrow margin and concluded that Mr Moon must make himself available for cross-examination. 2 One reason for this decision identified by the Assistant Commissioner was that Mr Moon makes a number of factual assertions which are unsubstantiated by any documentary or other supporting material 3. In holding that Mr Moon had made unsubstantiated factual assertions, the Assistant Commissioner referred to Mr Moon s statement in his 8 October 2012 declaration that members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants 4. 1 Letter from the Office to Henry Hughes and Kensington Swan dated 18 February [2014] NZIPOTM 40 at [113] 3 [2014] NZIPOTM 40 at [108.1] 4 [2014] NZIPOTM 40 at [89]

43 3.5 The Commissioner also referred to the largely unsubstantiated 5 statement of Mr Moon in his second declaration dated 20 December 2012 that he understands that any co-branded publications released in New Zealand by both CIMA and the Institute included the word CIMA together with the opposed mark, rather than the opposed mark being used in isolation. Evidence substantiating this statement 6 is already in evidence before the Commissioner and therefore does not now need to be filed. 3.6 The evidence set out in the Declaration now sought to be filed by the Institute substantiates Mr Moon s statement in his 8 October 2012 declaration that members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants by attaching evidence of third party reports and documents that corroborate Mr Moon s statement. In particular, the Declaration provides evidence to substantiate Mr Moon s assertion in relation to the public referring to the Institute as the Institute of Chartered Accountants. 3.7 On 30 September 2014, the Institute lodged a Notice of Appeal with the High Court appealing the decision to permit cross-examination of Mr Moon under section 170 of the Act. The parties are awaiting the High Court hearing on such point. 4 Genuine and exceptional circumstances 4.1 We submit that genuine and exceptional circumstances exist that justify the filing of the Declaration, and that it is appropriate for the Commissioner to exercise her discretion in the overall circumstances of this case. We therefore request that the Commissioner exercises her discretion to allow the Declaration to be filed under Regulation 34 of the Regulations. 4.2 In Muir Electrical Company Pty Ltd v The Good Guys Group Limited HC Auckland CIV exceptional circumstances were described as out of the ordinary 7, and that such circumstances may be by virtue of a single factor or by the combined weight of all relevant factors As set out above, CIMA has sought cross-examination of Mr Moon on the basis that they assert the following statement made by Mr Moon in his declaration of 8 October 2012 was not substantiated: members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants. 4.4 It is highly unusual in trade mark proceedings for such statements to be challenged by seeking to cross-examine the declarant. Generally, unsubstantiated statements filed in trade mark proceedings would be considered and given appropriate weight by the Assistant Commissioner after considering the position and standing of the declarant and the circumstances and contents of the statement. The Assistant Commissioner is entitled to attribute as much or as little weight to these statements as considered necessary or appropriate in the circumstances. As the Assistant Commissioner held in DB Breweries Limited v Society of Beer Advocats, Inc [2011] NZIPOTM 19 9, the weight attributed to evidence, points of disagreement, conflicts of evidence, and credibility can and should be resolved on the papers or through submissions at the hearing. 5 [2014] NZIPOTM 40 at [96] 6 We refer to MH-14 and MH-15 7 CIV at [84] 8 CIV at [85] 9 [2011] NZIPOTM 19 at [25.2] and [25.4]

44 4.5 Instead, in these circumstances the Assistant Commissioner has allowed cross-examination of Mr Moon. This decision, and therefore these circumstances, are out of the ordinary. We therefore submit that such circumstances are exceptional and justify the exercise of the Commissioner s discretion to allow the late filing of the Declaration. 4.6 It is also well established that cross-examination in trade mark proceedings should be permitted rarely: a b In DB Breweries Limited v Society of Beer Advocats, Inc [2011] NZIPOTM 19 10, the Assistant Commissioner held that the Commissioner will likely only rarely permit witnesses to be cross-examined and that historically there have been few, if any, hearings where oral evidence and/or cross-examination of witnesses have been allowed. In Aqua Technics Pool and Spa Centre Ltd v Aqua-Tech Ltd [2007] NZSC 52, the Supreme Court observed that cross-examination before the Assistant Commissioner was not customary or, at best, quite rare 11. c In NZ Optical (Wholesale) Limited v Hannaford and Burton Limited [1980] NZIPOTM 5, the Commissioner referred to his previous correspondence to the parties where it was emphasised that cross-examination in hearings before the Commissioner is not to be encouraged lightly. 4.7 CIMA has previously accepted that cross-examination is not a standard occurrence in trade mark proceedings before the Commissioner Therefore, given its rarity, permitting cross-examination is itself an exceptional circumstance. In this case the Commissioner exercised discretion to permit cross-examination. As this is not a standard occurrence, such outcome is out of the ordinary and is therefore an exceptional circumstance. We submit that this exceptional circumstance alone justifies the late filing of the Declaration. 4.9 Further, given that CIMA has challenged the unsubstantiated factual assertions of Mr Moon and the Institute is willing to provide written evidence on this point, we consider that this constitutes a genuine and exceptional circumstance justifying the exercise of the Commissioner s discretion to allow the late filing of the Declaration We submit that the circumstances discussed above are, by virtue of a single factor or by the combined weight of all relevant factors, out of the ordinary and are therefore exceptional circumstances as required under Regulation In addition, we note that in Underground Espresso Holdings Ltd v Union of Orthodox Jewish Congregations of America [2012] NZIPOTM 11 it was held that genuine circumstances are authentic, sincere, honest 13. We submit that the exceptional circumstances discussed above are authentic, sincere, and honest, and are therefore genuine circumstances as required under Regulation We therefore request that the Commissioner exercises her discretion to allow the Declaration to be filed under Regulation 34 of the Regulations. 10 [2011] NZIPOTM 19 at [25.1] and [25.4] 11 [2007] NZSC 52 at [5] 12 [2014] NZIPOTM 40 at footnote 41, page [2012] NZIPOTM 11 at [12.1]

45 5 Commissioner s discretion 5.1 We submit that the combination of factors discussed above justify the exercise of the Commissioner s discretion to allow the Declaration to be filed as late filed evidence. In addition, we submit that the overall circumstances of the case justify the exercise of the Commissioner s discretion. 5.2 In particular, we submit that the public interest in having all relevant information before the Assistant Commissioner for the substantive proceeding justifies the exercise of the Commissioner s discretion. The Declaration that the Institute is seeking to file will assist the Assistant Commissioner in substantiating Mr Moon s statement when she comes to consider all the evidence in the substantive proceeding. 5.3 Permitting the filing of the Declaration will prove more useful in these exceptional circumstances, than any oral cross-examination of Mr Moon, because the documentary evidence factually substantiates Mr Moon s statement. Therefore, it is submitted that crossexamination of Mr Moon on his statement would be of no or little value to CIMA. 5.4 In addition, we submit that the overall circumstances of the case justify the exercise of the Commissioner s discretion, because the balance of convenience lies in favour of allowing the Institute to file the Declaration. It is documentary evidence of third parties referring to the Institute as the Institute of Chartered Accountants. 6 Conclusion 6.1 If you have any questions, or require any further information, please don t hesitate to contact us. Otherwise we look forward to confirmation that the attached Declaration has been allowed to be filed as late filed evidence in the Opposition Proceedings. Yours faithfully Kensington Swan Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Associate Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com Copy: Elena Szentivanyi/Barbara Sullivan - Henry Hughes

46 In the matter of the Trade Marks Act 2002 And In the matter of Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in classes 9, 16, 35, 36, 41, 42 and 45 in the name of the Chartered Institute of Management Accountants And An opposition by the New Zealand Institute of Chartered Accountants Fourth Statutory Declaration of Richard Brandon Moon in Support of Opposition Dated 23 December 2014 KENSINGTON SWAN 89 The Terrace PO Box Wellington 6143 Solicitor: C A Henley Ph Fax DX SP26517

47 I, Richard Brandon Moon, of Wellington, solemnly and sincerely declare as follows: 1.1 I am the former General Counsel for the New Zealand Institute of Chartered Accountants (the 'Institute). I have already made three declarations in this matter, and I make this fourth declaration in support of my first declaration of 8 October Unless otherwise indicated, I have full knowledge of the facts set out in this declaration either through my own personal knowledge or from the records of the Institute to which I have access. I am authorised to make this declaration on behalf of the Institute. 1.3 I am aware that a challenge has been mounted by the Chartered Institute of Management Accountants to the statement in my declaration of 8 October 2012 namely: In addition, members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants. 1.4 I attach the following evidence which substantiates my statement that 'members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants'. Such evidence is detailed below: a Attached and marked exhibit RM1 is a transcript of a speech dated 18 September 2007 given by Jeanette Fitzsimons MP of the Green Party to 'Institute of Chartered Accountants Sustainability group' and also refers to the Institute'. b Attached and marked exhibit RM2 is a post from the blog Kiwiblog dated 19 November 2007, which is both titled and refers to the 'Institute of Chartered Accountants'. c d e Attached and marked exhibit RM3 is a copy of an article from the news website Stuff.co.nz, dated 11 February 2008, which reports that the 'Institute of Chartered Accountants', as one of a number of business groups, has issued a paper commenting on government tax policies. Attached and marked exhibit RM4 is a copy of an online article from The New Zealand Herald, dated 11 February 2008, which also reports that the 'Institute of Chartered Accountants', as one of a number of business groups, has issued a paper commenting on government tax policies. Attached and marked exhibit RM5 is a copy of a notice given on the National Business Review website, dated 12 February 2008, which states

48 that the 'Institute of Chartered Accountants', as one of a number of business groups, has commented on tax cuts. f g h i Attached and marked exhibit RM6 is an article from titled Centenary Celebrations. This article is dated 7 May 2008 and refers to the 'Institute of Chartered Accountants'. Attached and marked exhibit RM7 is a copy of an article from the news website Stuff.co.nz, dated 26 June 2008, which refers to the 'Institute of Chartered Accountants' code of ethics', an 'institute disciplinary tribunal', and 'the institute'. Attached and marked exhibit RM8 is a copy of an article from the news website Stuff.co.nz, dated 25 November 2008, which refers to an individual being struck off the 'register of the Institute of Chartered Accountants' and 'register of chartered accountants'. Attached and marked exhibit RM9 is a copy of an online article from The New Zealand Herald, dated 24 June 2009, which refers to an individual being struck off the 'Institute of Chartered Accountants' register'. Attached and marked exhibit RM10 is a copy of an online article from The New Zealand Herald, dated 28 July 2009, which refers to the 'ex-president of the Institute of Chartered Accountants'. k I Attached and marked exhibit RM11 is a copy of an online article from The New Zealand Herald, dated 8 August 2009, which refers to a complaint being laid with the 'Institute of Chartered Accountants'. Attached and marked exhibit RM12 is a copy of an online article from The New Zealand Herald, dated 5 September 2009, which refers to an individual having been struck off the 'Institute of Chartered Accountants' register'. Attached and marked exhibit RM13 is a copy of an online article from The New Zealand Herald, dated 5 September 2009, which refers to a comment from the 'assistant tax director at the Institute of Chartered Accountants'. Attached and marked exhibit RM14 is a post on the Tauranga Property Investors Association website under upcoming events, dated 15 September 2009, which is tagged 'institute of chartered accountants'. o Attached and marked exhibit RM15 is a copy of an article from the news website Stuff.co.nz, dated 23 October 2009, which refers to the 'Institute of Chartered Accountants'

49 p Attached and marked exhibit RM16 is a copy of an article from the news website Stuff.co.nz, dated 26 October 2009, which refers to the 'Institute of Chartered Accountants'. q Attached and marked exhibit RM17 is a memo dated 2 November 2009 from Cooper Rapley Lawyers, in which the Institute is referred to as the 'Institute'. r Attached and marked exhibit RM18 is a copy of an online article from The New Zealand Herald, dated 5 November 2009, which contains a quote from a banking analyst, Mr Tripe, referring to the 'Institute of Chartered Accountants'. s Attached and marked exhibit RM19 is an dated 24 November 2009 from Murray Wagener, Chairman of the Wagener Houhora Heads Endowment Trust Inc., in which the Institute is referred to as the 'Institute'. t u v w x y z Attached and marked exhibit RM20 is a copy of an article from the news website Stuff.co.nz, dated 15 January 2010, which refers to an individual being removed from the 'Institute of Chartered Accountants', and further refers to the 'institute' and the 'institute's disciplinary tribunal'. Attached and marked exhibit RM21 is a printed page from the website 'eventfinda' which lists a number of 'past events at Institute of Chartered Accountants' ranging from 24 February 2010 to 29 April Attached and marked exhibit RM22 is a copy of an online article from The New Zealand Herald, dated 12 April 2010, which includes a quote from the 'Institute of Chartered Accountants tax director'. Attached and marked exhibit RM23 is a copy of an online article from The New Zealand Herald, dated 20 April 2010, which refers to individuals being suspended from the 'Institute of Chartered Accountants'. Attached and marked exhibit RM24 is a copy of an online article from The New Zealand Herald, dated 2 May 2010, which refers to the 'annual fee of the Institute of Chartered Accountants'. Attached and marked exhibit RM25 is a copy of an online article from the news website Stuff.co.nz, dated 9 August 2010, which refers to subscription fees and maintaining membership of the 'Institute of Chartered Accountants'. Attached and marked exhibit RM26 is a copy of an online article from the news website Stuff.co.nz, dated 11 August 2010, which refers to the

50 'institute' and to individuals being struck off the 'Institute of Chartered Accountants'. aa bb Attached and marked exhibit RM27 is a copy of an online article from the news website Stuff.co.nz, dated 24 September 2010, which refers to the 'Institute of Chartered Accountants'. Attached and marked exhibit RM28 is a copy of an online article from the news website Stuff.co.nz, dated 28 September 2010, which refers to an individual having breached the 'Institute of Chartered Accountant's Code of Ethics' and the 'Institute of Chartered Accountants'. cc Attached and marked exhibit RM29 is a copy of an online media update from The New Zealand Herald, dated 26 November 2010, which refers to the reporting of a fine and censure by the 'disciplinary tribunal of the Institute of Chartered Accountants'. dd ee if Attached and marked exhibit RM30 is a copy of an online article from the news website Stuff.co.nz, dated 7 December 2010, which refers to an individual being censured by the 'Disciplinary Tribunal of the Institute of Chartered Accountants'. Attached and marked exhibit RM31 is a copy of an online article from The New Zealand Herald, dated 7 December 2010, which refers to a determination of the 'Disciplinary Tribunal of the Institute of Chartered Accountants'. Attached and marked exhibit RM32 is a copy of an online article from The New Zealand Herald, dated 10 December 2010, which lists 'the Institute of Chartered Accountants' as one of a number of entities conducting investigations. gg Attached and marked exhibit RM33 is a copy of an online article from the news website Stuff.co.nz, dated 7 February 2011, which refers to an individual being referred to the 'Institute of Chartered Accountants disciplinary tribunal'. hh Attached and marked exhibit RM34 is a copy of an online article from The New Zealand Herald, dated 27 February 2011, which refers to an individual having been struck off the 'Institute of Chartered Accountants' register'

51 ii Attached and marked exhibit RM35 is a copy of an online article from The New Zealand Herald, dated 4 August 2011, which refers to an individual being a fellow of the 'Institute of Chartered Accountants'. ii Attached and marked exhibit RM36 is a copy of an online article from The New Zealand Herald, dated 18 May 2011, which refers to advance notice being provided to the 'Institute of Chartered Accountants'. kk II Attached and marked exhibit RM37 is a copy of an online article from the news website Stuff.co.nz, dated 29 May 2011, which refers to the 'Institute of Chartered Accountants'. Attached and marked exhibit RM38 is a copy of an online article from The New Zealand Herald, dated 17 July 2011, which refers to the 'Institute of Chartered Accountants' fining an individual. mm Attached and marked exhibit RM39 is a copy of an online article from the news website Stuff.co.nz, dated 29 July 2011, which refers to the 'Institute of Chartered Accountants professional support director'. nn Attached and marked exhibit RM40 is an article from page 35 of the National Business Review dated 5 April 2012 which refers to the 'Institute of Chartered Accountants'. oo Attached and marked exhibit RM41 is an dated 23 July 2012 from Nick Paterson, General Manager, Fraud and Corruption at the Serious Fraud Office, in which the Institute is referred to as the 'Institute'. pp Attached and marked exhibit RM42 is an article from the National Business Review, dated 21 September 2012 which refers to the 'Institute of Chartered Accountants' and the 'institute's professional conduct committee'. I make this solemn declaration conscientiously believing the same to be true and by virtue of the Oaths and Declarations Act Declared at Wellington this 23 rd day of December 2014 before me: Richard Brandon Moon A Solicitor of the HTh (Jourt of New Zealand Abigail Ruth van Rchten Solicitor Wallington 6

52 Speech to Institute of Chartered Accountants Sustaina RM green " - Green Party of Aotearoa New Zealand Speech to Institute of Chartered Accountants Sustainability group Tuesday. 18 Sep Speech Contact: Jeanette Fitzsimons MP Tags: Climate Change, Environment THIS is the Exhibit marked referred to in paranaph..., of Chata laaon - D EC LAR D at..a.,./ebig /00..of the attached affidavit A Solicitor of the High CoutitsibpWigfttala80 ECK1311 Sohnita Welltnyiun The Institute has a long history of leading businesses towards Triple Bottom Line Accounting, now evolved into sustainability accounting, and has pioneered the idea that the same level of rigour should be applied to measuring and reporting social and environmental outcomes, as to financial results. There is now much wider recognition that business is accountable not just to its shareholders but to the society within which it operates. You have asked me to speak about "Greening NZ". Many would say that NZ does not need to be greened - that we are already clean and green and known for it world wide. We do have a superficial greenness, created largely by super phosphate, adequate rainfall, huge areas of pine forests, a low population and plenty of open space. However that is not the same as being sustainable. The super phosphate green is perhaps a good image pleasing to the eye of tourists who don't know its contribution to eutrophication of waterways such as the Rotorua Lakes. Another view was contributed by visiting environment commissioners from a number of countries at the time of the 20th anniversary celebration of the office of the Parliamentary Commissioner for the Environment. It was, I think, the Canadian commissioner who recounted his two day experience of trying to travel anywhere other than by car or aeroplane, and of our generally lax approach to pollution. He told the conference "you have no rules, you have no trains, you have no public transport, and I haven't seen cars with exhausts that dirty since I was a child". Where have we come from? Well, we used to be a society of some 200,000 people with virtually no overseas trade. Fisheries were so abundant to feed 200,000 people we had no need of marine reserves or tradeable quotas; there was no need of recycling as everything was biodegradable; we could cut forest because there was plenty more; it: was even sustainable for us to eat kereru because there was no threat to their population. Early New Zealanders; made some mistakes, in particular burning rather too much forest, but we learned from them before it was too late. Those practices are not sustainable for a population of 4 m people who are part of a market so open that there are 6 billion potential mouths to feed from the fish in our economic zone; we are feeding ten times our own population with dairy products; and importing large quantities of fossil fuel, minerals and non-degradable materials. We are fast using up spare environmental capacity, and in some areas it is already overused. Europe, with a much higher population density, realised the problem some time ago and is well ahead of us in sustainable practices; China has also realised it and faces a daunting task. In looking at where we have come from, I want to take the mid-seventies as the comparator, partly because that was the time when a flowering of environmental literature The Club of Rome's Limits to Growth, Commoner's the Closing Circle, the Erlich's work, and a little earlier Rachel Carson's Silent Spring, combined with the effects of thirty years of post war material growth, led to an era of unprecedented environmental awareness and concern. And partly because that was when I returned to NZ after 7 years in Europe, with two pre-schoolers, and became involved in environmental activism. When I returned in 1974 NZ was in the middle of the decision about where to site its first nuclear power station and I became deeply involved in that campaign. There was no curb side recycling then, but milk, beer and soft drink bottles were returned for rewashing. Cowshed wastes were often poured directly into rivers and streams, much sewage had only primary treatment, landfills were called dumps and located preferentially in mangroves, thermal power stations operated at less than 30% efficiency, cars used a lot of fuel per km, there were no serious restrictions on fish : catches, no dual flush toilets or low flow shower heads, no insulation standards for buildings, no energy performance standards for appliances (in fact no legislative power to set energy efficiency standards - this had to wait until I introduced the Energy Efficiency and Conservation Bill which passed in 2000). We also had the highest level of lead in petrol in the developed world. We had no Ministry for the Environment, no Department of Conservation or Parliamentary Commissioner for the Environment and no RMA, though there was some quite recent legislation on land use planning and water and soil. Haven't we come a long way?... day of before me: 17/12/2014

53 Institute of Chartered Accountants says Kill the Bill Kiwiblog Page 2 of 2 Institute of Chartered Accountants says Kill the Bill November 19th, 2007 at 3:30 pm by David Farrar M The Institute of Chartered Accountants joins the Law Society in asking the for Electoral Finance Bill to be killed: The Institute is deeply concerned that expert advice from the accounting and legal communities has been substantially ignored. Accordingly, we join the New Zealand Law Society in calling for the bill to be dumped" says David Pickens, the Institute's director of government relations and strategic projects. "The only way a workable solution will be achieved is for the bill to be dumped and redrafted from scratch. "To proceed in the face of such widespread and considered opposition sets a dangerous precedent. Democracy is too valuable and delicate to allow it to be trampled by such a flawed process." Now when is the last time you heard accountants get so worked up about an issue??? Shows how bad it is. Share this: 11 f Facebook TwSter in Lin dln More Related Posts: 1. Law Society says Kill the Bill 2. Now even Chris Trotter says Kill the Bill 3. NZ Herald does final call to Kill the Bill 4. NZ First Tauranga says Kill the Bill Tags: Electoral Act This entry was posted on Monday, November 19th, 2007 at 3:30 pm and is filed under Uncategorized. You can follow any responses to this entry through the RSS 2.0 feed. Both comments and pings are currently closed. Comments are closed. «They've made it worse! A lawyer's view» Kiwiblog is proudly powered by WordPress Entries (RS'S) and Comments (RSS) SI TE 11114: 1111 ME7EN THIS is the Exhibit marked,...igfv referred to in pac,graph...6 Lt.(-.V....Of e- āitac-ne.d. - affidavit of...kichaef.e.,(7. 4.Q.(2... DECLARED at... ' p ()...this......day of...before me: /.". A Solicitor of the High Court of New Zealand Abigail Muth Solicitor Woilingion of chartered accountants says kill the... 17/12/2014

54 Call for top tax rates to reduce to 30 pc I Stuff.co.nz Page 1 of 1 duff Call for top tax rates to reduce to 30 pc updatcd a I 2oT, gra3 A coalition of business groups has called on the Government to align the top personal tax rate with the company rate at 30 per cent. The Business Roundtable, Chambers of Commerce, Federated Farmers and the Institute of Chartered Accountant said the cuts planned for the 2008 budget in May should be targeted at creating wealth no at wealth redistribution. The group said the cut to the company rate to 30 per cent announced in the last budget was welcome, but a lower, flatter and simpler rate of taxation was needed now. The current top rate of personal tax is 39 per cent for earnings above $60,000 with those earning above $38,000 bracket pay 33 per cent. Finance Minister Michael Cullen has said he will outline a programme of cuts to personal tax in the upcoming budget, but has said they have to be fair and not increase inequality. The proposal by the business groups is unlikely to find favour with Dr Cullen as it would cost billions of dollars and put nothing in the pockets of low earners and little for those in the middle income bracket. Dr Cullen has refused to say what shape his tax cut package would take with speculation centring around a lift in the thresholds at which rates kick, paying out a flat dividend to taxpayers or creating a tax-free threshold. The business group said rate cuts were preferable to other options and they were affordable. It estimated the Government could afford $2.5 billion in tax cuts spread over a few years by lowering increases in Government spending and borrowing for infrastructure spending. - NZPA Age 55+ with Joint Joinhundredsoflhousandswhofoundielief with this new formula! THIS is the Exhibit marked referred to in paragraph.,.....of the attached affidavit of... Or... DECLARED.A ,...this... day of before me: A Solicitor of the High Court of New Zealand Abegali Ruth van Echten Soticitor wowngton 18/12/2014

55 Print nzherald.co.nz Article Page 1 of 2 M Zhe new Zetittit ititralb Business to Cullen: cut tax to 30pc By Claire 5:00 AM Monday Feb 11, 2008 A group of heavyweight business interests have laid out their dream tax-cut package, calling on the Government to make a bold move and cut all personal taxes to 30 per cent or less. The group, comprising the Business Roundtable, Chambers of Commerce, Federated Farmers and the Institute of Chartered Accountants, have issued a paper calling for the drop in tax rates as the Government prepares a three-year programme of cuts for the Budget in May. The group is also suggesting Working for Families should be cut back and no new concession schemes be introduced. Michael Cullen The paper, recommending what the Government should do in its Budget this year, said lower, flatter tax rates were an incentive for hard work and saving and promoted economic growth by encouraging investing. They also helped to stop tax avoidance by people trying to find ways not to move into higher tax brackets. The paper estimated the Government could spend $2.5 billion a year on tax cuts without serious impact on inflation and if state spending was kept under strict control. The group's dream package comes in the buildup to the Budget - when Finance Minister Michael Cullen is expected to introduce a three-year programme of tax cuts. Dr Cullen has set aside $1.5 billion for cuts but has not yet given any indication of the size of them or how widely they will apply. The group said the tax system should be designed to promote economic growth, rather than as a tool for redistributing wealth, saying "at present New Zealand's tax policy is lacking in strategic direction and vision". "The wage gap with Australia can not be closed by redistribution - it requires growth. A bold package that aligns all income tax rates at 30 per cent or below would increase productivity and economic growth." They said cutting taxes across the board was better for growth than simply adjusting the thresholds at which higher taxes kicked in because adjustments would benefit a relatively small number of people. Vkir no It m?obi ectid= - THIS is the Exhibit marked to in pararaph... the attached affidavit... of... DECLARED t... gl.e1/0? of. before me: A Solicitor of the High Court of New Zealand

56 Print nzherald.co.nz Article Page 2 of 2 The paper also cautioned against extending schemes such as Working for Families or introducing other tax "concessions" because people became wary of earning too much to qualify for them and they made the tax system too complex. Of Working for Families itself, the paper recommended a reduction in assistance for higher-income families which qualify for the scheme because the lower tax rate would provide the same assistance. The group also advise against introducing a tax-free threshold, saying a low-income rebate was the simplest system for helping poorer families. The group said that while a flat tax was the best solution for fiscal drag - the effect of increasing numbers moving up into the higher thresholds - some threshold adjustments to benefit lower income taxpayers could form part of an overall package. A spokesman for Dr Cullen said he had not yet seen the report and repeated his previous statements that any tax cuts had to meet his four rules: they must not exacerbate inflation, must not require cuts in spending, must not require further Government borrowing and must not create inequalities in society. The group's report says their proposal is affordable "provided firm control is exercised over government spending". It said slowing the current growth of Government spending would help to finance the tax cuts without resulting in cuts in services. It could also be done without government borrowing for operating purposes, and argued there was capacity to fund more capital spending by debt without a significant change to forecast debt-ratio numbers. It said the impact on inequalities was minimal and although the cuts might have a "one-off, not ongoing effect" on the consumers price index, inflation could be controlled by firm monetary policy. By Claire Copyright 02014, APN New Zealand Limited 18/12/2014

57 Clark says tax cuts will happen The National Business Review Page 1 of 2 NBR Rifn 5 Clark says tax cuts will happen NZPA TUESDAY FEI3RUARY 12, 2005 E Helen Clark Helen Clark Prime Minister Helen Clark has assured critics that Finance Minister Michael Cullen's preconditions for tax cuts will be met. A coalition of business groups yesterday called on the Government to align the top personal tax rate with the company rate at 30 percent. Dr Cullen has resisted loud calls for personal tax cuts for several years, but has said he will unveil a "three-year plus" programme of tax cuts in this year's budget. But critics of Dr Cullen have repeatedly questioned his commitment to the cuts, suggesting he might use the four preconditions he has spelled out for tax cuts to scuttle the programme. Those preconditions are that cuts do not boost inflation, increase inequality or lead to increased borrowing or reductions in key services. But Miss Clark today Dr Cullen's preconditions would not make cutting taxes impossible. "They don't make them impossible, otherwise he would not be saying he is going to announce a programme of them," she said on NewstalkZB. "I think the conditions will be met". Asked if Dr Cullen had had to be "strongarmed" into offering tax cuts, Miss Clark said "he absolutely knows the time has come to make that announcement". But Miss Clark said a balance had to be struck between tax cuts and spending in key areas such as health and education. The tax cuts also needed to be "fair" so that people on low incomes were able to live with dignity. The Business Roundtable, Chambers of Commerce, Federated Farmers and the Institute of Chartered Accountant yesterday said the cuts should be targeted at creating wealth, not at wealth redistribution. The group said the cut to the company rate to 30 percent announced in last year's budget was welcome, but a lower, flatter and simpler rate of taxation was needed now. The current top rate of personal tax is 39 percent for earnings above $60,000 with those earning above $38,000 paying 33 percent. The proposal by the business groups is unlikely to find favour with Dr Cullen as it would cost billions of dollars and put nothing in the pockets of low earners and little for those in the middle income bracket. Dr Cullen has refused to say what shape his tax cut package would take, with speculation centring around a lift in the thresholds at which rates kick in, paying out a flat dividend to taxpayers or creating a tax-free threshold. The business group said rate cuts were preferable to other options and they were affordable. It estimated the Government could afford $2.5 billion in tax cuts spread over a few years by lowering increases in Government spending and borrowing for infrastructure spending. IIKOMMENT & QUESTION Commenter icon key: A Subscriber 0 Verified ANgall THIS is the Exhibit referred to in paragraph,... y...(14...of the attached affidavit of..(ngee2.... DECLARED a.../7 day of.0.( before me: ee.-ein A Sglickor of tlet.14gip, Court of New Zealand vf4 18/12/2014

58 entenary celebrations I Items I National Library of New Zealand I Item Landing Page I Collections I N... Page 1 of 1 Sorry folks! Images ordered after December 24 won't be processed until we're back on January 5. NATIONAL LIBRARY OF NEW ZEALAND Vo#00 0 AOTEAROA Centenary celebrations More from findnzarticles on: Accountants Anniversaries Crombie, Graham Institute of Chartered Accountants of New Zealand Rites and ceremonies Wedlock, Keith Wee, Sandra Auckland Council Date: 7 May 2008 By: Hine, Sally The Institute of Chartered Accountants celebrated their 100-year celebration. Sandra Wee became their 30,000th member. Includes illustration of celebrations with president Graham Crombie, new member Sandra Wee and chief executive Keith Wedlock. Source: Central leader, p 20 From: Auckland Libraries This is a findnzarticles item Take the reference to your local public library, and they can help you access the original item. For articles, include the source journal or serial, if shown above. What is findnzarticles? FindNZarticles is an index of over 1.5 million articles and bibliographies from journals, newspapers, and books. THIS is the Exhibit marked to in of.... /t`razd(d.... DECLARED at... c ho 0/11C... referred... of the attached affidavit...this day of before me: A Solicitor of the High Cotecawarainn Olga Sdatar Wettington Alp ://natlib.govt.nzirecords/ ?search%5bpath%5d=items& search%5btext%5d=centenary+c... 19/12/2014

59 Auditors guilty of ethics code breach - business I Stuff.co.nz Page 1 of 1 Auditors guilty of ethics code breach UrgiAtVd 07'42 "6/C)C.i200:. RM7 Two Auckland accountants who audited failed finance company National Finance 2000 have pleaded guilty to breaching the Institute of Chartered Accountants code of ethics. Michael Wood and Bruce Mincham, directors of Auckland accountancy firm O'Halloran HMT, admitted failing to take due care and diligence when auditing the accounts for the year ending 2005 when they appeared at an institute disciplinary tribunal yesterday. They admitted a range of charges including failure to obtain sufficient corroborative audit evidence about the collectability of National Finance 2000's advances to motor dealers, failure to tell the covenant trustee company in writing that National Finance 2000 had breached its trust deed, and signing an unqualified audit opinion. Other charges of misconduct and unbecoming conduct were dropped before the hearing. The pair were censured and ordered to pay the hearing costs of $133,000 between them. One of the first companies to fail, National Finance 2000 went into receivership in May 2006 owing more than $25.5 million. The firm, owned by used car dealer Allan Ludlow, gave loans to people buying cars from Payless Cars. The institute said it was reviewing every audit file from every failed finance company but declined to comment on the likelihood of more tribunals. - The Dominion Post Marketing Autom Finish2014withaBang.FindSales& Marketing Success. Free Der THIS is the Exhibit marked referred to in parawph..._/. the attached affidavit of... /()..... DECLARED at..a.leate day of Cein(W. before me: A Solicitor of the High CoukilarRielmtilEChten Snlicitot Wellington 18/12/2014

60 Lake Alice for sale - news - manawatu-standard I Stuff.co.nz Page 1 of 1 Lake Alice for sale t. upoated I ::'2 00 Lake Alice is set to be sold, ending the tenure of a former bankrupt who is bankrupt again and a man struck off the register of chartered accountants. Aucklanders Paul Percy Chapman and Patrick McCormick acquired the 56-hectare property near Bulls from the Government in 2006 and had planned to subdivide it, but the venture was one of a series that fell flat when the property market deteriorated. Lake Alice - formerly a secure unit for the criminally insane and a psychiatric hospital - is again being marketed as a "former village complex". Mr Chapman, declared bankrupt in the High Court at Palmerston North in 2002, was to spearhead the development project. But it never got off the ground and he was bankrupted again at the High Court in Auckland last week. Wrightson real estate agent Murray Robinson said Lake Alice was not a mortgagee sale, however. Mr McCormick, who was struck off the register of the Institute of Chartered Accountants in July, said he now had as little contact as possible with Mr Chapman. "I'm the man who's been left with a lot of the mess," Mr McCormick said. The planned development was hit by the economic downturn associated with the international credit crunch, he said. Easy Factors International finance company general manager Kieran Jones said his business was working with the owner of Lake Alice to get the maximum return possible. Easy Factors holds the mortgage. Lake Alice is owned by Lake Hicks Ltd, of which Mr McCormick is the sole director and shareholder. Mr Chapman is a former shareholder. Mr Chapman told the Manawatu Standard in May that a subdivision was "going through the planning process". Those plans stalled before any proposals were formally presented to Rangitikei District Council and they were never revived. The caretaker at the property in the past two years, who declined to be named, said it had gone to "rack and ruin" since he left about five weeks ago. He was owed about $22,000. he said. Another company run by the Auckland pair, Queenstown Alpine Ltd, embarked on a multimillion dollar project in Nelson. But it went into liquidation last month, owing about $10 million to creditors. Mr Chapman is listed as an unsecured creditor for $800,000. Mr Chapman and Mr McCormick are also the former owners of The New Railway Hotel building in Main Street West, Palmerston North. The Oaks Law Centre forced a mortgagee sale there and it also held the mortgage for Queenstown Alpine. Mr McCormick was struck off the register of chartered accountants after a disciplinary tribunal found him guilty of professional misconduct, negligence or incompetence. The charges related to Mr McCormick failing to run a trust account and conduct an audit properly. - Manawatu Standard Valuation & Sales F MavaProperty'sSalesHstoiyandValuationat Time of sale * Rivg THIS is the Exhibit marked....i...referred of theattached affidavit to in paragraph of....01! DECLARED at... I? day of me: A Solicitor of the High Court of New ZelLatign esom cogs" ci'm sowctot,tieongton 18/12/2014

61 RY\A oc new ZeatatiO 315 Print nzherald.co.nz Article Creditors irate at choice of receiver THIS is the Exhibit nnarkjecl...referred to in pargrpph.../:44 1)......O.f.ih e- a-tt. a-ched affidavit of... d JOY) DECLARED at...ri...this... day of me: A Solicitor of the High Court of New ZQ ;1811ECtiten Abigt" sopeitot weittno,011 By Maria Slade 4:00 AM Wednesday Jun 24, 2009 Irate creditors of a failed printing and publishing group are taking legal action to stop a convicted fraud ster from administering the businesses. A long list of creditors are owed an estimated $3 million to $4 million following the collapse of shopping magazine publisher Retail Media and its associated printing company Horizon Printing. The receiver for Retail Media and liquidator for Horizon is John Gilbert, who was sentenced to 3 years' jail in the early 1990s for fraud and struck off the Institute of Chartered Accountants' register. Former Nathans Finance director John Hotchin. Photo / Dean Purcell A consortium of Retail Media creditors has gained a High Court injunction this week preventing Gilbert from dealing with the company's assets. It has also applied to the court to have him removed as receiver. Meanwhile Horizon Printing creditors are looking to force Gilbert to step aside as liquidator of that company, following the sale of the business's assets to a "phoenix" company on the eve of the liquidation. Big Quality Print was incorporated on May 20, one day before Horizon Printing's shareholders appointed Gilbert as liquidator. Owned by a former Horizon manager and a trustee company, Big Quality Print has bought Horizon's trading activities and a significant proportion of its equipment. It is operating out of Horizon's Avondale premises and has even retained the same phone number. Accounting firm WHK Gosling Chapman - owed $200,000 and now one of the consortium of creditors - had applied to have Retail Media wound up. Chief executive Rowan Chapman said the firm was "beaten to the punch" when interests associated with one of Retail Media's shareholders appointed Gilbert as receiver on June 5. Three days later Retail Media's shareholders put the company into voluntary liquidation, appointing Ray Burgess and Craig Young of Restructuring Services as liquidators. The consortium of creditors has also applied to the court to have Restructuring Services replaced as liquidator. Greg Scott is a director and significant shareholder of both Retail Media and Horizon Printing. ectid= /12/2014

62 Print nzherald.co.nz Article Page 2 of 2 When approached by the Herald, Scott said he was unable to comment because the companies were in the hands of the liquidators. Asked if he had anything to say to his creditors, he replied: "If I did, I wouldn't be saying it through you." Gilbert said he did not want to comment because he was in discussions with other liquidators about taking over the jobs. "I've become aware of some things and I'll probably be retiring." Gilbert was sentenced in December 1993 after pleading guilty to defrauding his clients while working at accounting firm Spicer and Oppenheim. Over a period of 4 years he took $373,000 to prop up the ailing Ramarama Country Inn in which he had an interest. The talk in the printing industry has been that former Nathans Finance director John Hotchin was backing the newly established Big Quality Print. However it's understood he acted only as an adviser to Greg Scott and his Horizon co-director Jason Hall. Hotchin's name appears on the Personal Property and Securities Register as the person acting on behalf of the company. Hotchin, brother of Hanover Finance shareholder Mark Hotchin, is facing charges under the Securities Act in relation to the $1 74 million collapse of Nathans. Subsidiaries of APN News & Media, which publishes the Herald, are creditors of Retail Media and Horizon Publishing. By Mal ia Slade - NZ Herald Copyright 2014, APN New Zealand Limited 18/12/2014

63 Print nzherald.co.nz Article RIY116 Ow new Zeit!anti fir THIS is the Exhibit mark to in paragraph../...k.t{. of... DECLARE at..let&a./7. ecezm. icitor of the High Court of New Zealand referred...of the attached affidavii 2..this day of...before me: writ eh rff. Sr*. Real estate revamp aims to lift standards,,, -, i eettirr By Anne Gibson 4:00 AM Tuesday Jul 28, 2009 Rules governing about 70,000 house sales annually will change in three months when the new Real Estate Agents Authority opens. Wellington QC Kristy McDonald was appointed by the Government to head the authority in May but her official role does not begin until November 17, when rules come into force which usher in the authority. Kristy McDonald. Photo / Mark Mitchell The authority replaces both the Real Estate Institute and Real Estate Agents Licensing Authority's self-governing and regulatory functions. But McDonald says the country's agents - once about 18,000 but now about 12,000 - have nothing to fear. "It's all about increasing standards and that's a good thing. I thinkthe industry will welcome that.it's all about raising profes-sionalism and consumer confidence." The authority's headquarters will be in Wellington and next month it will start a website ( ) which McDonald says will contain information about the new system. "The objectives of the authority are that the process will be independent and transparent and the disciplinary process will be independent from the industry." The regime is also designed to be self-funding: agents will pay annual $500 licence fees and levies will be raised to fund the complaints and disciplinary regimes. An implementation team has been established through staff at the Ministry of justice in Wellington and a large group has been working on the new regime for months. McDonald says the biggest change will be ushering in the individual licensing regime so that all agents, branch managers and salespeople are regulated and accountable. Under the 1976 act, agents are licensed and the branch managers and salespeople must have a certificate of approval issued by the Real Estate Agents Licensing Board. The certificates are applied for and held by the agent who employs the branch manager or salesperson. That all changes to individual licences under the new act. All agents, branch managers and salespeople must apply for and renew their own licences from November. A new rulebook will also be brought in. "A code of professional conduct and client care will be introduced and the new authority is required to issue that. A draft is going out for consultation within the next month. It will set standards of 18/12/2014

64 Print nzherald.co.nz Article Page 2 of 2 conduct for all agents, salespeople and branch managers. It sets out duties of disclosure and has rules on the provision of information and other aspects," McDonald says. New written guidelines must be provided to those buying and selling houses before contractual documents are signed. "They must be given to consumers when an agency agreement is entered into and a separate document must be provided when a sale and purchase is entered into." There will be a rigorous complaints and discipline regime. "The complaints process, which comes under the board's control, will mean agents will be investigated and possibly censured, licensees made to apologise and fines be made of up to $10,000 for licensees and $20,000 for companies. "The new authority can also refer matters to the new Real Estate Agents Disciplinary Tribunal to conduct a hearing." Justice Minister Simon Power has appointed six members to the authority. They are former Consumer Institute chief David Russell; New Plymouth commercial and property lawyer John Auld; Auckland JP Barrie Barnes, who has had a long involvement in the real estate industry; ex-president of the Institute of Chartered Accountants Denise Bovaird; Joan Harnett- Kindley, of Wanaka, who has run real estate businesses; and Peter McDermott, of Wellington, who has a background in banking and finance and formerly held senior positions at BNZ and National Australia Bank. HOUSING SECTOR * About 6000 houses are sold a month. *The median national price is $340,000. * Sector handles deals worth $23 billion. " Radical overhaul from November 17. By Anne Gibson - NZ Herald Copyright 2014, APN New Zealand Limited 18/12/2014

65 Print nzherald.co.nz Article Roi at flew Zealatib II Page 1 of 4 Clothing firm collapse leaves questions By Maria Slade 4:00 AM Saturday Aug 8, 2009 Most New Zealand women's wardrobes will have included something from Jean Jones over the years. The stores, selling stylish cotton T-shirts, jeans, merino tops and the like, have graced the nation's high streets for decades. The business was built up by the Ward family and is one of those rare Kiwi clothing brands that has remained locally owned and manufactured. The Ponsonby Rd store in Auckland is one of 20 around the country. Photo / Richard Robinson While the label has had its high-fashion moments these days its customer base is more the trendy babyboomer generation. However, being a well-known brand has not been enough to protect against the bitter winds of the recession. The list of rag trade casualties is well known: Line 7, Canterbury, and Lane Walker Rudkin have all hit the skids through various factors such as unforgiving trading conditions and bad management decisions. Jean Jones has been no exception. On May 7, owner Michael Ward - who bought the business from his family in the early 1980s - was forced to put the three companies associated with it into liquidation. But this story of how an established name reached the brink of extinction is not one of simple tough trading, or even of foolish management. A "snap, grab and take", as liquidator Bernard Montgomerie likes to call it, of the business's assets on April 24 uncovered a chain of events that has piqued the interest of authorities from the Inland Revenue Department to the Companies Office to the trustee of a small Gisborne-based finance company. The 20 Jean Jones retail outlets and manufacturing operation are now owned and run by Gisborne businessman John Gardner, leaving behind a bewildered Michael Ward and creditors owed at least $4 million - including $1 million to the IRD. Ward is bewildered not least because of the souring of a long-term relationship. He and Gisborne chartered accountant Nigel O'Leary had been friends since the 1980s when O'Leary's wife ran the Jean Jones shop in the city. THIS is the Exhibit markedr,.. to in p ararh... j ini7 I/ / 4.4-.(K..., the attached affidavit... referred DECLARED at...z.',w414q, e4.c.-)...this... gr... day of n.e.;,/...-- edii.e w., -.ol.....before me: Ahlook I or of the High Court of New Zealand Wetluvon

66 Print nzherald.co.nz Article Page 2 of 4 O'Leary is the business partner, longtime friend and distant cousin of John Gardner. The two are codirectors in numerous companies, including the small finance company Rockforte Finance in which they both have an interest. But up until the April 24 seizure of assets, O'Leary was an adviser to Michael Ward - so much so, Montgomerie says, that O'Leary ran Jean Jones. Montgomerie says Ward trusted O'Leary completely. The Gisborne practitioner was Jean Jones' accountant from 2006 when he got rid of the in-house person. He controlled all the financial records and internet banking, and signed documents. He moved the administration function from Auckland to Gisborne. That makes him a shadow director, liquidators Montgomerie & Associates say. They have served O'Leary with notices under Section 261 of the Companies Act requiring him to hand over the companies' records. "We sent out our usual notices and just met with resistance left, right and centre from O'Leary, Gardner and their lawyers," Montgomerie says. With the slowing retail sector Jean Jones had hit trouble. Attempts were made to restructure. But "negotiations between the shareholder, management and financiers broke down when parties involved in the negotiations seized all the assets of the company and relocated the office and the warehouse", Montgomerie says in his first liquidators' report. The 130 staff were told they were being employed by a new company and the Eftpos machines in the stores were changed so that bankings were diverted. All of this happened without Michael Ward's knowledge, much less consent. Montgomerie says the April 24 move was the culmination of a series of unexplained events surrounding Michael Ward 1969 Ltd, Ward's company through which he traded all his interests including Jean Jones. IN LATE 2008 a Gisborne surfboard and surfwear business called New Wave, which Ward had purchased from O'Leary several years before, was sold to O'Leary's daughter and son-in-law for $770,000. Montgomerie & Associates can find no record of those funds being paid or credited to Michael Ward 1969 Ltd. They can also find no record of revenue from New Wave being banked into any Michael Ward 1969 account during the whole period the company owned it. Even stranger still, bank statements show that chunks of money flowed between Michael Ward and Rockforte Finance. On June 18 Rockforte manager Colin Simpson told Montgomerie & Associates that there had never been "any advance made to this company by Rockforte Finance". However records show that in May and June 2008 amounts of $265,000 and $224,000 were transferred from Michael Ward 1969 to Rockforte. 18/12/2014

67 Print nzherald.co.nz Article Page 3 of 4 Montgomerie says in turn Rockforte made numerous deposits into the Michael Ward 1969 account. The transfers were in amounts such as $47,000, $45,000 and $18,000. There has been no explanation for this flow of funds. All of this has caused Montgomerie and Associates to begin action on a range of fronts. It has passed information to the Companies Office, laid a complaint against O'Leary with the Institute of Chartered Accountants, and raised issues with Rockforte's trustee, Covenant Trust. It is also considering its options in the civil courts. "In my opinion this has been an orchestrated campaign over at least three years, starting with the repurchase of the New Wave franchises and then progressing on to money washing through the company, and with the final seizure of all the assets and failing to account," Montgomerie says. Covenant Trust managing director Graham Miller confirms there are concerns over Rockforte, which is covered by the Government's deposit guarantee scheme. "We are aware of the issue, we have asked the auditors to investigate and we are awaiting their confirmation," he says. Meanwhile John Gardner has control over what Montgomerie estimates is a $5 million business. Ten days before the seizure Gardner set up a new company and purchased a $680,000 general security agreement which had been held over some of Jean Jones' assets by another financier. In addition Rockforte Finance had lent $422,000 to one of Michael Ward's now-liquidated companies, even though this particular entity had never traded and didn't even have a bank account. The Weekend Herald understands this loan was secured over the intellectual property of the Jean Jones business. On the basis of these securities, totalling $1.1 million, Gardner's interests have taken control of Jean Jones. But this leaves behind all the preferential creditors - including staff owed $170,000 in unpaid wages, and the IRD owed $866,000 plus penalties - and a host of other out-of-pocket suppliers. MONTGOMERIE estimates there will be total claims of well over $4 million. He says he is even receiving proofs of debt from suppliers whose goods are being sold in New Wave's Newmarket retail outlet. What's more he says the 2008 balance sheet shows Jean Jones has current assets of $5 million - far more than the $1.1 million Gardner has picked the business up for. Nigel O'Leary dismisses that valuation out of hand. "Making a valuation of a clothing company that couldn't pay its debts in today's market at $5 million to $6 million, one would have to say [that] is a relatively bold statement by anybody," he says. He maintains he and Gardner have acted within their rights as directors of Rockforte. "We exercised our rights that we were certain we had, that were confirmed by detailed legal advice. "We welcome any challenge to that." Even though Rockforte's management says no funds were ever advanced to the trading company, Michael Ward 1969, "the transactions involving Rockforte Finance were settled through the seizure of the assets, and Rockforte was fully repaid, suffering no losses", O'Leary says. 18/12/2014

68 Print nzherald.co.nz Article Page 4 of 4 And he flatly denies he ran Jean Jones. He says he only came to Auckland a few days a month and wasn't the company accountant. "I refute any orchestrated campaign fully and totally." He says in fact Gardner has saved the business. "Mr Gardner was bold enough to exercise his rights under security documentation that he personally had in conjunction with myself. "And instead of just placing it in receivership and letting the company fall over... [he] kept the stores open and saved 127 jobs in the process." Bernard Montgomerie says the Inland Revenue Department for one is unlikely to see it this way. He says the tax man has evidence that O'Leary acted as a shadow director of Jean Jones and could go down the route of holding the directors personally liable for the $1 million tax bill. He maintains that the only claim Gardner and O'Leary have to Jean Jones is the $680,000 worth of assets picked up with the security agreement, and even then this interest comes way down the pecking order behind the preferential creditors. The Weekend Herald understands that Gardner and O'Leary also claim to have personally lent Michael Ward money. Montgomerie has seen no evidence of it. "Give us the books and records and let the liquidators verify that." THE PLAYERS Jean Jones Chain of 20 retail stores and clothing-manufacturing operation. Michael Ward Bought the business from his family in the early 1980s. Michael Ward 1969 Ltd The trading company of Jean Jones (two other Jean Jones entities never traded). Nigel O'Leary Gisborne chartered accountant. Director and shareholder of Rockforte Finance. Ward says he was a close adviser and effectively ran Jean Jones. John Gardner Gisborne businessman. Director and shareholder of Rockforte Finance. Longtime friend and business partner of O'Leary. Now controls Jean Jones. Rockforte Finance Small finance company with loan book of $6.8 million. Government guaranteed. Lent non-trading Jean Jones company $422,000 secured on intellectual property of business. By Maria Slade - NZ Herald Copyright 2014, APN New Zealand Limited 18/12/2014

69 KM I2 the new Zutianb Print nzherald.co.nz Article THIS is the Exhibit marked... to in paraaraph.. )...4 of... /.i.hae-eft7. zeo.2.0e.p,r.0/ the attached affidavit A Solicitor of the High CourtA0w2ellafi Licr EChten Solicitco...day of before me: Row over receiver heads to High Court By Maria Slade 4:00 AM Saturday Sep 5, 2009 A dispute over the appointment of a convicted fraudster as receiver of failed publishing firm Retail Media is headed to court. A group of creditors has gained a High Court hearing into whether :John Gilbert acted in good faith in his handling of the receivership. Gilbert was jailed in the 1990s for three and a half years for fraud and struck off the Institute of Chartered Accountants' register. Retail Media published the shopping magazine Bestbuys and had a print company Horizon Printing. Creditors owed an estimated $4 million were angered when interests associated with Retail Media's shareholders appointed Gilbert receiver on June 5. They were further dismayed when Retail Media appointed its own liquidator, Ray Burgess of Restructuring Services, three days later. The creditors immediately sought and gained a High Court injunction preventing Gilbert from doing anything with the company's assets. Rowan Chapman, chief executive of accounting firm WHK, which is owed $200,000, said they were worried Retail Media could go the same way as Horizon Printing the month before. Horizon, largely owned by Retail Media major shareholder Greg Scott, appointed Gilbert as liquidator on May 21 - one day after a new company, Big Quality Print, was incorporated and bought Horizon's business. Big Quality Print is owned by a former Horizon manager and a trustee company and now operates out of Horizon's Avondale premises. Horizon's creditors, owed about $1.9 million, were looking to force Gilbert to step aside as liquidator when he did so on June 24, the same day the Herald published a story about the situation. Chapman said a nominee company representing a trust associated with Scott's family appointed Gilbert as receiver of Retail Media, based on a security it supposedly held. But the creditors believed the family trust held the security. Meanwhile Burgess stepped down as liquidator of Retail Media on July 27 and has been replaced by John Cregten of Corporate Finance. Gilbert's first receiver's report dated August 14 says the publisher owes $7.5 million in total. Subsidiaries of APN News & Media, which publishes the Herald, are creditors of Retail Media and Horizon Publishing. 18/12/2014

70 01113 itbe &tuzettiantt 41) Print nzherald.co.nz Article THIS is the Exhibit marked.. referred to in paragraph,...,...ffl...of the attached affidavit of...kk.oa.!&...&-40:... are DECLARE at.. Na6, f 17...this day of ece,,enae.!.-v before me: A Solicitor of the High Court of Neyogorauth van Echter solicitor Wellington Mary Holm: jump in now, reap reward later By Mary Holm 4:00 AM Saturday Sep 5, 2009 In your column last week you said, "For every month you delay [joining KiwiSaver], you could miss out on the equivalent of $700 to spend in retirement." In reality this applies today, but in a year's time the month is worth less as it is one year closer to retirement. You're quite right. I didn't make that point clearly enough. And given that it applied to just one reader's situation, I've decided to make the point more generally this week, as it's pretty important. Putting off joining KiwiSaver could be a decision to regret at retirement time as there is a big difference between starting now and starting two years from now. Photo / NZ Herald KiwiSaver has been around for more than two years now. Most eligible people who haven't yet joined have already missed out on thousands of dollars of spending money in retirement. For the young, it's many thousands of dollars. If you're not yet in the scheme, it's a really good idea to join now so you don't miss out on further thousands. As we all know, there's no such thing as a free lunch. The price of lunch here is your contributions to KiwiSaver. Still, in the example in our table - of an employee currently earning $50,000 who contributes 2 per cent of pay - the contributions are less than $20 a week. And while the table assumes that pay and contributions will rise 3 per cent a year, generally that shouldn't be hard to cope with. You end up with vastly more in retirement than you personally put in because the government and in many cases your employer also contribute, and because of compounding returns. Looking at other income levels, for someone earning $30,000, 2 per cent of pay amounts to less than $12 a week. For someone earning $80,000, it's less than $31 a week. Of course those making lower contributions will end up with less in retirement. But for everyone except people over 60 - more on them in a minute - there will still be a big difference between starting now and starting two years from now. As the table shows, a young person earning $50,000 today, and earning a 5 per cent annual return, might miss out on close to $100,000 in retirement by delaying joining KiwiSaver for just two years. And if they invested in a riskier fund with a higher return, they could miss out on considerably more. Even a 50-year-old on $50,000 might lose $15,000 by delaying - and more in a riskier fund. The exception is people 60 to 64. At your age, you get exactly five years in KiwiSaver regardless of when you join - as long as you get in before your 65th birthday. However, if you are likely to retire before 70, it's a good idea to start now so you get as many years of employer contributions as possible. hap :// ectid= /12/2014

71 Print nzherald.co.nz Article Page 2 of 4 It's important to note that the numbers don't take inflation into account. But even after adjusting for inflation, we are still talking pretty big numbers for just two years' delay. Assuming 2 per cent inflation, the 18-year-old's $91,000 is worth $35,000 in today's dollars. In other words, the $91,000 would buy as much as $35,000 buys today. That's quite a few lunches. And the 40-year-old's $27,000 is $16,000 in today's dollars. Why are the differences so big for just two more years of membership - especially for the young? As stated, our numbers assume the employee's pay rises by 3 per cent year - which is probably reasonable given the likelihood of some promotions and moves to higher-paying jobs. Over long periods, this growth greatly boosts the employee's and matching employer's contributions, even assuming the government's maximum tax credit doesn't rise at all. For example, in the 47 years between age 18 and age 65, an employee's pay will grow almost tenfold. Adding two more years of large employee and employer contributions makes a big difference. So does earning 5 per cent a year on a large balance. I joined KiwiSaver in September 2007, a month before I turned 65, and retired the following March. Therefore I had only a few months of employer contributions. Since retirement I've made no further contributions, mainly because I haven't been sure of what I should do. Could you please advise what would be the optimum amount to be paying in to get the maximum benefit from the scheme, be it lump sum or monthly payments, or both. Good on you for getting aboard while you could. Now that you are no longer employed, you're in the same KiwiSaver position as the self-employed, beneficiaries and other non-employees over 18. Try to contribute $1043 a year, which will be matched by the tax credit. If you can't afford that much, put in as much as you can. You can make your contributions in any pattern - $20 a week, $87 a month, sporadically or all in one go - during the KiwiSaver year, which runs from _July 1 to June 30. Setting up regular contributions is a good idea. It makes budgeting easier, and you'll buy more units in your KiwiSaver fund when the price is down than when the price is up. That means your average price will be lower than the average market price. This is sometimes called dollar cost averaging. I am a little puzzled by your recent answer to a couple looking for a better return on their house deposit. Two questions came to mind. First, given that Working For Families is income-tested at 20 cents in the dollar, and the husband is in the 33 per cent tax bracket, they will lose more than half of any extra interest they earn. But PIE income is taxed at no more than 30 per cent, and is ignored in the Working For Families income test, so wouldn't your couple get to keep almost another quarter of their interest if they invested in a PIE instead of a term deposit as you suggest? Many banks now offer term PlEs with the same security, interest rates and terms as their term deposits, so why not? Secondly, with the wife not earning, wouldn't it make sense for the couple to invest only in her name (with a suitable loan agreement between them for his half of the money) so that they can further reduce the tax from his 30 per cent PIE tax rate to her 19.5 per cent? Now they're keeping an extra third of the interest - quite possibly thousands of dollars a year. 18/12/2014

72 Print nzherald.co.nz Article Page 3 of 4 Good thinking - mostly. To explain to other readers, once a couple's income is more than $36,827, the Working for Families tax credit is reduced by 20 cents for every extra dollar earned. If you add 33 per cent tax into the mix, an extra dollar of interest will end up as less than 50 cents in the hand. But this assumes the couple's interest is taxed at 33 per cent. If the savings are jointly owned, the couple can ask the bank to "treat the joint account holders as being only one person, and only issue one certificate", says Inland Revenue. That person can be any one of the account holders nominated by the joint account holders." In other words, the couple can ask the bank to withhold tax on their interest at the non-earning wife's lower tax rate of 19.5 per cent. The withholding tax is not a final tax. "The income should be included in the couples' separate tax returns on a 50:50 basis (or other proportion if they can show that a 50:50 basis is not appropriate)," says Inland Revenue. Each spouse can claim a credit of half the withholding tax. That means the husband would end up paying further tax, to get it up to 33 per cent on his share of the interest, but the wife's interest would stay taxed at the lower rate. Note the mention of tax returns, which the couple might not currently have to file. If that's the case, the non-earning wife still wouldn't need a tax return. But if the husband's share of the interest income is more than $200 a year, he would need to file a tax return. What happens if the couple moves their savings into a PIE? There are three advantages: * As you point out, PIE income is not counted in Working for Families calculations, so the couple will get more from Working for Families. "The couple can simply tell the bank or other financial institution running the PIE that part of the money should be taxed at the wife's tax rate and part at the husband's rate. Usually the split would be 50:50. " While the wife's income will still be taxed at 19.5 per cent, the husband's will be taxed at 30 per cent - down from 33 per cent. Clearly a PIE is the way to go. What about your idea of the husband lending the money to the wife, so it's all taxed at her rate? Inland Revenue says, "Income from (PIE) investments held in one investor's name cannot be transferred to another person, for example, a spouse on a lower income. However, investments can be sold or gifted. There are rules regarding gifts made or the valuation of property sold to associated persons." When I asked Aylton Jamieson, assistant tax director at the Institute of Chartered Accountants, how this might be done, he suggested legally transferring the savings into the wife's name, with debt forgiven at $27,000 a year to avoid gift duty. Each spouse would have to get separate legal advice to do this. "If the husband was to sign up to that agreement, that may leave him slightly exposed in the event that the couple were dissolved," says Jamieson - making the marriage sound a bit like jelly crystals. "But I would never discount the ingenuity of commercial lawyers to draft something up to cover that possibility. 18/12/2014

73 Print nzherald.co.nz Article Page 4 of 4 "If dissolution was a worry, it would be possible to use a discretionary trust and allocate the income out to the wife. This would solve that problem, but create additional compliance." It sounds as if you could spend more on legal costs than you gain in tax savings - to say nothing of all the hassle. I like the KISS principle - keep it simple, stupid - even if it means paying somewhat more tax. Mary Holm is a seminar presenter, part-time university lecturer and bestselling author on personal finance. Her website is Her advice is of a general nature and she is not responsible for any loss that any reader may suffer from following it. Send questions to marygmaryholm.com or Money Column, Business Herald, PO Box 32, Auckland. Letters should not exceed 200 words. We won't publish your name. Please provide a (preferably daytime) phone number. Sorry, but Mary cannot answer all questions or give financial advice. By Mary Holm - NZ Herald Copyright 2014, APN New Zealand Limited 18/12/2014

74 Contents :: Tauranga Property Investors Association,p 1 Page 1 of 1 7AuftANGA PROPERTY, INVESTORS AS5 QCIATION Tauranga Property Investors Association tr Phone: taurangagnzpitorg.nz (mailtotauranga@nzpitorg.nz )-- * User Login Up coming Events Keeping you updated with up and coming events Tag: institute of chartered accountants Tuesday, Sep 15, 2009 Key all but rules out property capital gains tax (/news/view/54102) While the Prime Minister John Key virtually ruled out a capital gains tax yesterday, he is much less unequivocal about other forms of tax on property investment. read full story > (/news/view/54102) Results: 1 Show 10 (/contents/tags/10/institute+of+chartered+accountants/25/) 2550 (/contents/tags/50/institute+of+chartered+accountants/25/) per page Quick Links Upcoming Events (/events/future) Past Events (/events/past) Sponsors & Partners Oa aunnings warehouse (httpwwww.nzpito rg.nz/spo n s orsa Home (/) About Us (Jabout-us/) Membership Information Vmembership-info6 Membership Enquiry VcaLls/ask/) Events Vevents/) News Vnews/) NZPIF (httpl/ nzpif.org.nz. ALL Rights Reserved rn/4 THIS is the Exhibit marlsed referred to in paragraph the attached affidavit of DECLARED at...a4.90(),.....this of.. before me: A Solicitor of the High Court of New Zealand o p tht)elt l scal 6'01 11 http ://tauranga.nzpif.org.nz/contents/tags/45/institute+of+chartered+accountants W /12/2014

75 Changes proposed to oversight of auditors I Stuff.co.nz Page 1 of 1 gm S OM. Commerce Minister proposes changes to oversight of auditors EtY Las: :3-,:lat;h1 1:3 12. Commerce Minister Simon Power is proposing to strip the accounting profession of self-regulated oversight of auditors after damning criticism from the Registrar of Companies regarding the collapse of the finance company sector. Power wants to remove the Institute of Chartered Accountants from the dual role of overseeing and promoting the profession. Responsibility for auditor oversight would be moved to a beefed up Accounting Standards Review Board, to be known as the External Reporting Board, according to a Cabinet paper published on the Ministry of Economic Development website. The changes will see all statutory audits fall under this requirement, and limit more complex operations to "suitably skilled practitioners." They will align New Zealand with global standards. "The main benefit of establishing auditor registration and auditor regulation oversight will be to reduce the risks that investors will incur large auditfailure-related losses." Power said in the document. "The marginal benefits clearly exceed the marginal costs in this case, given the scale of investor losses that can occur where there is audit failure." Earlier this year. Neville Harris, the Companies' Registrar, issued a damning report on the failure of the nation's finance companies, and said the auditing of the sector "lacked the rigour and analytical depth one would expect for entities managing substantial public investments." The 'big-four' accounting firms, Deloitte, Ernst & Young, PricewaterhouseCoopers and KPMG, were often uninterested in finance company audit appointments, and left the task to second-tier accounting firms which lacked the capability and experience to review the "complex and elaborate company and business structures." Power has led changes to the Trustees Act in the wake of the sector's collapse which will see the Securities Commission take on board responsibility for licensing trusts, and will soon release a discussion document on an overhaul of the Securities Act. He was reluctant to add auditors to the Commission's regulatory burden, saying "information is more likely to flow freely from accredited accounting bodies to the overseer if they know that the information will not be used for other regulatory purposes that are unrelated to oversight." Still, the Securities Commission will be able to be called in for certain investigations, and routinely surveys published company accounts for accounting standards compliance. Commission chair Jane Diplock this week criticised the low quality of disclosure in many accounts, especially since the introduction of new, higher disclosure requirements under the International Financial Reporting Standards. The External Reporting Board will focus its efforts on high-risk entities such as banks and publicly-listed companies. The new entity will cost approximately $400,000 to set up, with ongoing annual costs of around $700,000, and will be fully-funded through levies and fees. The government hopes to have the new system being up and running in BUSINESSWIRE K eys erv Software Asset Management RE License Control/Auditing t> THIS is the Exhibit marked, referred to in the attached affidavit of ff-4460(.. &Aft'. or<w., DECLARED at... 6f./ ay Of. Aen......before me: A Solici or o the High Court of New Zealand soliritor n... 18/1 Fah VE 1 Echten 2/2014

76 Move to external audits praised - business Stuff.co.nz Page 1 of 1 guff. Move to external audits praised BY GAkE: H VAUGt IAN Lae u;)dat.::: v,-2i)0,., The days of the New Zealand accounting profession regulating itself appear numbered after international pressure and criticism of auditors roles in the demise of the finance company sector. Commerce Minister Simon Power said the Institute of Chartered Accountants faced a potential conflict of interest as it both regulated auditors in the public interest and promoted the interests of the accounting profession. Mr Power said he planned to introduce legislation in the middle of next year that would bring in independent oversight of auditing, with changes taking effect from He noted that self-regulation was no longer internationally acceptable and the longer New Zealand retained this model, the more likely an overseas jurisdiction would stop recognising audits done by New Zealand auditors. The European Commission had written to New Zealand and 33 other countries inquiring whether they had a public-oversight system equivalent to the regulations in place in European Union member states. Mr Power said he would write to the commission outlining the Government's decisions. He proposes that oversight responsibility be handed to independent Crown entity the Accounting Standards Review Board, which would be renamed the External Reporting Board. The board had "expressed a willingness" to take on the oversight responsibility. Licensing would be introduced, with a register of licensed auditors established. Mr Power said. The Securities Commission could be called in as a "safety valve" for certain public interest audits. A report from the Registrar of Companies, Neville Harris, this year on the collapse of 27 finance companies outlined three contributing factors to their systematic failure, One of these was concern that auditors did not have enough capability and experience to audit such complex and elaborate company and business structures. Feedback from receivers suggested substandard audits were a component in the delay and demise of some finance companies. Mr Power said if auditors had issued qualified rather than unqualified opinions there would have been a stronger imperative for the trustees to step in earlier. "Therefore, it is not unreasonable to assume the size of the deposits at risk would have been lower than the $3.7 billion total stated by the registrar," Mr Power said. "The main benefit of establishing auditor registration and auditor regulation oversight will be to reduce the risks that investors will incur large audit failure-related losses." Institute of Chartered Accountants chief executive Terry McLaughlin said the organisation had worked with the Government on the changes and it was "fantastic" they were now going ahead. International credibility and recognition were the key drivers of the changes. "That's important for our profession medium term and that's important for business, New Zealand and the credibility of our capital markets." - BusinessDay Tax Business Accou: AllTaxTlustsAccountingSeivices.Come And Have A Chat With Us No THIS is the Exhibit marked,.. to in p=ph... referred...of the attached affidavit DECLARE I at.aide0.7,74, this day of......before me: A Solicitor of the ig Calrt of New Zealand co.nz/business/ /move-to-external-audits-praised 4S' wriptelai Z"'it uitntl 7811/ 1E27274

77 This page has been modified for the purposes of section 9(2)(b) of the Official Information Act 1982 because it contained material that appeared to be commercially sensitive. THIS is the Exhibit marked l...referred to in paragraph.,...1,.-. 4/ _.of the attached affidavit of...4w/dca...d.e-zw..fev.... t-z.a.9.i.i...., This page has been modified for the purposes of section 9(2)(b) of the Official DECLARED at..i.ge'eati 4.)....this... Information Act 1982 because it contained material that appeared to be -r... day of,."130e a....before me: commercially sensitive. I A Solicitor of the High Court of 144reaMA land "' EChten j) Solicitot Wellington

78 Print nzherald.co.nz Article Zhe new Zealati6 g THIS is the Exhibit to in the attached affidavit of... Ifra DECLARE at...z.v...this...day of before me: A Solicitor of the High Court of New Zealand Abigai" au** soticytu Westpac misery blurred by poor data, say/ 40" 0 analyst By Adam 4:00 AM Thursday Nov 5, 2009 Westpac suffered a shocker of a year in New Zealand on mushrooming bad debt charges and a massive tax bill but the extent of its misery has been obfuscated by what banking analyst David Tripe has labelled "scurrilous, nonsensical data". van Wag' The bank reported September-year cash earnings of $236 million, down 40 per cent on a year ago. The six months to September were particularly painful with cash earnings of just $34 million against $240 million for the same period a year earlier. Westpac Banking Corporation has indicated it will pick up the tab for its New Zealand division's $961 million tax bill if an appeal fails. Photo / Richard Robinson Westpac NZ chief executive George Frazis said the "disappointing" result was generated by impairment charges more than trebling from $170 million a year ago to $572 million, "mostly related to commercial property exposures". Parent Westpac Banking Corporation, which yesterday indicated it would pick up the tab if its New Zealand division's appeal against a $961 million Inland Revenue "structured finance" tax bill failed, said the local operation had suffered "a challenging and disappointing year given the weak environment." Westpac NZ did not publish a separate net profit or "bottom line" figure which includes non-cash items such as the now-standard revaluations of financial instruments. "When banks report cash earnings it really is the equivalent of net profit after tax," Frazis told the Business Herald. From the shareholder perspective it's exactly equivalent." However recent results from Westpac rivals BNZ and ANZ National show there is indeed often great variance between cash earnings and net profit figures. BNZ reported cash earnings of $420 million but a bottom line net loss of $181 million. ANZ reported underlying earnings of $628 million but a net profit of just $194 million. Both banks' bottom lines were affected by big provisions for back tax and interest related to their own contested "structured finance" tax cases, but also by one-offs and non-cash items. Frazis said if non-cash items had an impact on profit "they're already in there" as were any one-offs of which "we've got very few". However, Massey University's head of banking studies Tripe commented that an initial look at the figures released yesterday revealed glaring inconsistencies when compared with the bank's most recent General Disclosure Statement - a document the Reserve 18/12/2014

79 Print nzherald.co.nz Article Page 2 of 2 Bank says is "intended to assist bank customers to understand more about the financial condition of banks operating in New Zealand". Yesterday, Westpac said bad debt charges for its New Zealand operation, excluding institutional banking, were $184 million for the March half. In its March GDS the corresponding figure was $338 million. "It bears no relationship to the published financial data for the entities in question, what's the point in releasing it?" asked Tripe. "My understanding is the Institute of Chartered Accountants is supposedly doing something to deal with this sort of scurrilous nonsensical publication of data. They obviously haven't got there yet but if they have, they haven't told Westpac." Westpac later told the Business Herald the discrepancy arose because the March New Zealand GDS numbers included more recent - and significantly worse - bad debt numbers than those used to prepare its March-half Australian statutory accounts even though both sets of figures dealt with the same reporting period. By Adam NZ Herald Copyright 2014, APN New Zealand Limited 18/12/2014

80 gill 19,o n > r. 8 6 ; t9t, ' N,7. 0 g, P il 81 3 Q., 2. i2 'il 5,.6-4, 5 r A 4.'1, i,, &I 41-c..,.., R. a 0 1"4,--.Vp (-. o g a g, Z # ' F..,",< 1 Ca) 'el wa g, * a. 0 a:a o,r. T; RFa x CI g i o R. 2..P4W ic *.Z er, a. g. g' a n r,. 5 0 C '- o o.a. P., (. $.:g ox B i k - 1., g '6; pr =gt g...,, g 0 0,- F.; rol THIS is the Exhibit referred to in paragraph the attached affidavit of /.d :47.4.O.V4 DECLARED at......this... Sg-S.. day of...before me: A Solicit sr of the High Court olkgroggftithclian Solielta WeitingOn

81 Accountant told to pay $12,000 costs Stuff.co.nz Page 1 of 1 uff Accountant told to pay $12,000 costs r RYAN IVANS Las! updilted ;;;11) :12010 gir A prominent New Plymouth accountant has been removed from the Institute of Chartered Accountants for breaching its rules and code of ethics. David Carrington was found guilty of six separate counts of breaches by the institute's disciplinary tribunal last year. As well as being removed from the institute, Mr Carrington was ordered to pay the institute $12,356 in costs and expenses. The tribunal's report on Mr Carrington notes "no clients have claimed to suffer loss nor is there any evidence that the member has issued inappropriate audit opinions". "Having twice been reviewed without signs of improvement the member is now overtly un-co-operative towards the institute. While the audit documentation shortcomings alone may not justify removal from membership, the combination of various particulars taken in total is of sufficient significance." Mr Carrington said he did not want to comment yesterday The six breaches relate to: Failure to provide correct documentation with audits showing they complied with professional standards Not complying with IRD filing percentages and consequently losing his time extension arrangement with the department. Being unable to prove he had completed the institute's professional development requirements. Not supplying his audit work to the institute's professional conduct committee. Not showing up for his final hearing. An Institute spokesman told the Taranaki Daily News yesterday that of 31 decisions from the tribunal in the past 2 1/2 years, eight people, or 25 per cent, were struck off the register. - Taranaki Daily News Discover All You need To Know About Business in less than go pages...ẹ...referred il9z THIS is the Exhibit marked., to in paraph. ra 7,../.-f ie4:.1...of the attached affidavit of. DECLARED /PO... this ay... of e*g before me: A Solicitor of the High Court of New Zealand Atlicaali Mitt' 4Firi tete 7li 31., 1 '18/12/2014

82 Institute of Chartered Accountants, Auckland - Eventfinda Page 1 of 4 Toggle navigation Search Search List Event Toggle user menu 4eeventfindal On ) Loa In with Facebook Sign tip or Lila In Home Find Events Concerts & Gigs Tours Tickets Artists Venues News New Zealand / Change Your Location 1. Home Institute of Chartered Accountants 2. Venues 3. Auckland 4 Auckland Central27 Ohinerau St, Remuera, Auckland. 5. Remuera InShare lilltweet Share 472,791 members 203,918 events published Website: com Venue Types: Club & Society, Business Are you responsible for Institute of Chartered Accountants? Claim it 11 YILSKIN TICKETS ON SALE NOW Click here to advertise on Eventfinda Post a comment Add a comment.. Comment using... Past events at Institute of Chartered Accountants Small Business updates Institute of Chartered Accountants, Thu 29 Apr 2010 Manning Remuneration Half-day Toolkit Institute of Chartered Accountants, Fri 26 Mar 2010 Smartworkolace: Mannin2 a Personal Grievance Institute of Chartered Accountants, Wed 24 Feb 2010 Flight to Financial Freedom (Property Investment Seminari Institute of Chartered Accountants Tue 4 May 2010 Restructurinit and Redundancy Half-Day Toolkit Institute of Chartered Accountants, Fri 19 Mar 2010 THIS is the Exhibit man5ed..,... i to in p7graph....of the attached affidavit High Court of Aiwa van Ewen Softeltor Weilinwton 17/12/2014 UI DECLARE at..gtiea??......day of Jez.(...before me: c; A Solicitor.

83 Print nzherald.co.nz Article ithe R0922 etti Zealatib THIS is the Exhibit mar)( to.i.n..p./r ayfai ga( rapli of the attached affidavit of Arow DECLARED at...n6a7...this.... day of A Solicitor of the High Court of New Zealand Andrew King: Income tax cuts admirable let's look again at winners and losers By Andrew King 4:00 AM Monday Apr 12, 2010 If income tax rates are to fall, then someone has to pay for it....before me:, Abligla c Solicitor Wellington u...6a uthvbfl c on ark We will all contribute through higher GST, which is fair. And many think it is fair for tenants and rental property owners to make up the shortfall. The main reasons suggested are that property investors have a tax advantage and that they take money out of the tax system. It is understandable why people may feel that increasing rental property tax is reasonable, but have we been told all the facts and the ramifications of these tax changes? "Rental property has a tax advantage" is a general statement that has been repeated so often it is assumed to be a fact. Some believe that one advantage is paying no tax if you sell a property for more than it cost you. While that's true, this is also the same for buying or selling a business, shares or any other investment. Vodka seller 42 Below Zero started in a garage in 2002 and sold the company four years later for $138 million. No tax would have been payable on this. Trade Me was started from scratch in 1999 and sold for $750 million in The owners (including Tax Working Group member Gareth Morgan) paid no tax on this amount. If I buy 100,000 shares in a company for $1 and sell them for $1.50 the next day I pay no tax on the gain. Others say that because rental property owners can write off losses against other income they make, this is a tax advantage. However the same rules apply to any investment or business. If I buy a part-time business and lose money while building it up, I can use this loss to reduce the tax on my other income. Being able to claim mortgage interest payments as a tax deduction could be seen as a tax advantage. However if I borrow funds to purchase shares or a business then the cost of the interest is tax deductible as well. Share investors have said rental property has a tax advantage because owners can claim depreciation on the building but they can't depreciate their shares. 18/12/2014

84 Print nzherald.co.nz Article Page 2 of 3 While this is true, the companies they buy shares in have access to the same depreciation rules as rental property. Plus, if the rental property increases in value when sold, the depreciation is clawed back by the Inland Revenue. The fact is rental property has no tax advantage over other businesses or investments. This was confirmed by Inland Revenue Deputy Commissioner Robin Oliver. When asked by a Government select committee if there were tax advantages for investments in rental housing, Oliver said: "The short answer is there are none. Rules about expenses for deducting costs such as interest, upkeep and maintenance, as well as paying tax on income were the same for investments in shares or anything else. In fact under the housing case there are tighter rules to what is a capital gain." Institute of Chartered Accountants tax director Craig Macalister sounded caution regarding the proposals to tax rental properties differently from other assets. "Those proposals signal a departure from the way in which other income-generating assets are taxed. We need to be careful not to fall into the trap of selected taxes for different assets or investments for all the reasons why these were a failure in the past." Many believe rental property takes tax money from the system rather than paying into it. This is because there was a combined loss of $500 million in 2008, resulting in around $150 million of tax deductions. But information supplied to the Tax Working Group by the IRD shows the rental property industry has made losses in only two of the past 28 years. Interest rate and house price increases from 2003, without corresponding increases in rental prices, were the reason for the profitability declines. To suggest rental property owners are tax takers rather than tax payers based on two of the past 28 years is clearly misleading. It would be a mistake to target tenants and rental property owners based on incorrect information and assumptions. However these two groups would not be the only ones to suffer from onerous property taxes. If investment in rental property declines, the housing market is likely to decline as well. Some believe this would be good for first home buyers, but higher rental prices would affect them in raising a deposit. There is a $6000 difference in the cost of owning the average NZ home rather than renting it, so there is room for rental prices to increase if the cost of providing rental property increases. Tenants are not the only ones to suffer. Home owners' equity would reduce, and lower house prices would make it difficult for small to medium businesses that use their homes as collateral for business borrowing. The aim of reducing income tax rates is admirable, but a great deal more thought is needed on how this will be achieved. * Andrew King is vice-president of the NZ Property Investors Federation. 18/12/2014

85 Print nzherald.co.nz Article Page 3 of 3 By Andrew King - NZ Herald Authority (Epsom) I 1 0: 1 7AM Monday, 1 2 Apr King says "house price increases from 2003, without corresponding increases in rental prices, were the reason for the profitability declines." Exactly. Prices were driven up to ludicrous levels because the investors were counting on depreciation to make a loss and get their huge tax refunds, and tax-free capital gains to make a huge profit. All paid for by the rest of us. We need to scrap depreciation on residential housing and ring-fence the losses. Then you will see prices come back into line with rents. It is ironic that he mentions trade me, these are the kinds of businesses New Zealanders should be investing in - that create new wealth and new jobs. Don't keep pumping up the unproductive housing inflationary bubble. Clodhopper (New Zealand) I 10:18AM Monday, 12 Apr 2010 A great article Andrew, but you are too late producing it. I hope Bernard Hickey responds to it. He is one person who has been hysterical over the property sector. I suspect Mark Weldon is another but behind closed doors. The fact is that the Natonal govt does not have the balls to cut government spending of the magnitude that is required, which is what they should be doing first and foremost. Instead, National has created an illusionary and unfair picture of residential property investors as though they are getting some big advantage and stealing from the needy. Its a disgrace. If the govt wants to shift the incentives so people spread their investment they should get creative. If they implemented Roger Douglas's zero company tax with 0.8% asset tax idea they would get better results, mums and dads would be more inclined to shift funds into businesses and out of non taxable residential investment property. Mums and dads got into property because they were given the incentive to profit from it and avoid the thieves in the finance companies. Hitting middle NZ and destroying the property market along with their values does not seem to bright to me. James (Christchurch) I 10:18AM Monday, IT 0 You point out that there is a $6000 difference between renting and buying, but your conclusion that there is room for rents to increase is incorrect. The actual conclusion is that many property investors have overpaid for their investments, and they can't make a profitable business at the price they paid. You appear to be trying to suggest that somehow tenants will be forced to pay for bad business decisions by landlords, but that doesn't follow. Copyright 02014, APN New Zealand Limited 18/12/2014

86 Print nzherald.co.nz Article RM23 Page 1 of 2 iihe flew zea anti ilicralb Bridgecorp, Five Star directors suspended By famsyn Parker 4:00 AM Tuesday Apr 20, 2010 Two failed finance company directors have been suspended from the Institute of Chartered Accountants after being found guilty of conduct unbecoming to an accountant and breaching its code of ethics. Bridgecorp director Cornelis Robert Roest, who is facing 10 charges brought by the Securities Commission relating to issuing false prospectuses for the finance company, failed to show up to a hearing held by the institute's disciplinary tribunal last Tuesday. Cornelis Roest. Photo / Richard Robinson The tribunal found Roest had brought discredit to the profession by being banned from being a director for five years by the Companies Office in May last year and by being made bankrupt in the High Court at Auckland in September. "Accordingly, the tribunal found these particulars to support a finding of guilty in respect of [the] charges." The tribunal ordered Roest be suspended from the institute until either his directorship ban or bankruptcy order ended and he was publicly censured. He must also pay $5361 to the institute for the costs of the hearing and its publicity. Bridgecorp collapsed in _July 2007 owing 14,300 investors $459 million. Meanwhile, Five Star Finance director Anthony Walpole Bowden, a retired accountant, admitted to bringing discredit to the profession and pleaded guilty to both of the charges at his hearing last Tuesday. In its ruling the tribunal said it "accepted that the member acted in good faith, albeit to a standard insufficient to satisfy the Register of Companies". Bowden was banned from being a director for five years in May last year. The tribunal suspended Bowden for the period of his directorship ban and ordered him to pay $3000 costs. It suppressed evidence about his current financial and personal circumstances. Bowden faces criminal charges laid by the Companies Office relating to securities offered to members of the public without a registered prospectus or investment statement. Five Star collapsed in 2007 owing $90 million. THIS is the Exhibit marked,... to in parnrph...,... Ota i....of the attached affidavit By Tamsvn Parker o f ZW.72Y7.1.t), ( DECLARED a... 0,?.9.z`r.??2...this of - NZ Herald e6ealheer.,7el, before me: they van gotten A Solicitor of the High Court of Pitigearana ectid= Solicrtot V401111gt0n

87 RM214 Zhe Dew Zralan6 Lj Print nzherald.co.nz Article Police staff rack up huge bills THIS is the Exhibit...referrec to in paragraph,... the attached affidavi. of... DECLA D at......this day of.eee' bt me, A Solicitor of the High Court vidan sovia6 *collo By Anna Leask 4:00 AM Sunday May 2, 2010 Police racked up more than $2.5 million of charges on business credit cards last year, including stays at luxury hotels, dinners at flashy restaurants and countless taxi rides. However, they say all charges were incurred in the line of duty and they have nothing to hide when it comes to revealing details of their spending. In total, 821 police staff with credit cards spent a combined $2.571m last year, up from $2.4m in Credit card expenses include luxury hotels and restaurants. Photo / Amos Chapple So far this year they have spent $784,000. Statements for Commissioner Howard Broad, his two deputy and five assistant commissioners, five national managers and 12 district commanders show credit card spending of $133, between January last year and February this year. The statements were provided to the Herald on Sunday under the Official Information Act. The cards are issued on the proviso they are used only for "goods and services validly incurred in the course of NZ Police business". Bruce Simpson, the general manager of the police finance and planning team, said the cards were used predominantly for business-related travel. "The type of expenditure covered includes taxis, hotels, motels, and meals," he said. "All cards statements are checked and authorised by a supervisor. Police have strict policies and procedures around the use of credit cards." Other expenses, such as Broad's airport valet parking and Simpson's annual fee to the Institute of Chartered Accountants, registration fees for conferences and forums, holiday parks for recruitment camps for high school students and university textbooks are also paid by credit card. All cards have a spending limit, but each cardholder's annual spending is governed by their own budget. Broad and overseas-based liaison officers can spend up to $10,000 at a time, and deputy and assistant commissioners, national managers and district commanders get $5000. Of the 13 credit card statements provided for staff at Police National Headquarters, Deputy Commissioner Rob Pope was the biggest spender, with a total of $13,436.57, followed by Assistant Commissioner Steve Shortland with $ /12/2014

88 Print nzherald.co.nz Article Page 2 of 2 Detective Superintendent Malcolm Burgess, head of the national organised and financial crime agency, spent $ and Simpson $ The statements showed transactions from trips around Australia and to Bangkok, Beijing, Belgium, Hong Kong, Kiribati, Samoa, Singapore and Suva. They also revealed police bosses have been staying in luxury accommodation, including the Renaissance Brussels Hotel in Belgium, Hilton hotels in Bangkok and Adelaide, Samoa's Aggie Grey's Hotel, Queenstown's upmarket Millbrook Resort and Wellington boutique hotel The Bolton. Simpson said the hotels were "good value middle of the road" places and accommodation within New Zealand was selected from a set "panel". "A nominal expenditure guide is in place to assist in the choice for New Zealand hotels. This is harder to prescribe for overseas locations." He said the venue for courses, conferences and other events often guided where officers stayed. "Further, some hotels offer us excellent rates - especially at off-peak times - and other benefits such a as free parking, which save the New Zealand Police money." Labour's police spokesman Clayton Cosgrove said the total spent on credit cards was more than 10 per cent of the $21m figure police are being told to cut from their budget this financial year. "I would assume the Police Minister is taking a great interest in expenditure of this nature in these tough times," he said. "I am sure this will be raised when police appear before the select committee regarding their budget." Police Minister Judith Collins would not comment, saying credit card use was the responsibility of the Police Commissioner. Police Association president Greg O'Connor said credit card spending was scrutinised. "It's essential that we keep up to date with what is happening in policing around the world. Police have to stay in hotels, they have to eat, they have to catch taxis. Our crooks are travelling overseas so it would be folly for police not to travel." The majority of spending on the 12 district commanders cards was for travel, food and hotels in New Zealand. The biggest spender was Eastern area Superintendent Sam Hoyle, who racked up $15,046.75, followed by Waikato Superintendent Allan Boreham with $ and Central Superintendent Russell Gibson with $ By Anna Leask - Herald on Sunday Copyright 2014, APN New Zealand Limited 18/12/2014

89 Guests paid back DHB for farewell meal I Stuff.co.nz Page 1 of 1 Oa= Guests paid back DHB for farewell meal FLEUR GOGLE updvi,,d 9:;:00 RAI 25 A meal to farewell South Canterbury District Health Board chairman Joe Butterfield cost more than $2300, but taxpayers did not foot the entire bill, the board says. The meal, which totalled $ on December 10 last year, was the second-largest expense charged to the district health board's chief executive Chris Fleming's credit card during a two-year period. The registration fee for a week-long Institute of Directors governance course in April was the most expensive item at $6260. Figures just released show $39,726 was spent between June 24, 2008 and June 23, 2010 on the credit card. The board chose to release the credit card information voluntarily. Mr Fleming said the DHB and its management believed in public accountability. "We support recent moves towards regular reporting of public sector credit card spending, and will continue to make this information available to the public or media on request" he said. "As chief executive I take my responsibility for wise and responsible spending very seriously. I am confident that the use of my credit card is within the rules." All his credit card spending was work-related and supported DHB business, he said. Most of the money was spent on taxis, meals, accommodation, travel, professional development courses, membership fees and car parking and storage. Health board communications manager Arlene Goss said 23 people board members, management, partners and one guest were at the meal farewelling Mr Butterfield, whose service predated the DHB. After the meal, the chief executive's credit card was used to pay the full amount, but guests' partners reimbursed the health board afterwards. National data showed that chief executives at different DHBs used their credit cards in different ways, Mr Fleming said. Some used taxi chits, booked accommodation to be charged back, or paid work-related subscription and conference fees by invoice. None of these figures appeared in the data released by some DHBs and therefore their real expenditure might be understated. Mr Fleming said analysis of the information needed to take these factors into account. The released figures also showed $ was spent on a staff Christmas dinner at the Richard Pearse Restaurant in Ms Goss said this dinner was attended by 30 staff who worked in the administration building in However, last year staff paid for their own Christmas meal and staff gifts had been discontinued, she said. Another dinner for six, to welcome a specialist physician, was charged to the card at $706.50, but the restaurant had overcharged and a partial reimbursement was received, she said. Other chief executive's expenses met by the taxpayer included subscription fees to the Institute of Chartered Accountants and the Institute of Directors. Ms Goss said maintaining membership of the Institute of Chartered Accountants was a condition of Mr Fleming's employment agreement. The subscription to the Institute of Directors was a work-related expense that supported the role of chief executive. - The Timaru Herald Stocks Will Crash in 2015 Its The End Of This Bull Market Get Ready For The 2015 Market Crash THIS is the Exhibit marked._. to in paragraph referred..of the attached affidavit of... DEC RED at this...day of...before me: A Solicitor of the High Court of New Zeal**,an

90 Accountants guilty - business - waikato-times I Stuff co.nz Page 1 of 1 RM 26 Accountants guilty Hobbs and Rose struck off for poor conduct BY r4ic, ()LA OY I:: 8 Last ilf dal:a 12: I 1 i1/ Waikato accountants Shane Rose and Gary Hobbs have been struck off the Institute of Chartered Accountants for bringing the profession into disrepute. The pair, who owned Hobbs Rose Ltd in Te Awamutu, were found guilty of conduct unbecoming an accountant. A decision from the institute said they managed their practice in such a manner they were unable to pay creditors in reasonable time. It also said they conducted their affairs in in a way that caused detriment to their clients and other business interests and brought the institute into disrepute. Hamilton lawyer David Nielsen applied last month to put the accountants into liquidation over a debt owed to his firm, Neilsen Law. Hobbs Rose settled that debt, but Oparau farmer Neil Scott then took liquidation proceedings. The Waikato Times understands he is owed $155,000. The Waikato Times also understands Auckland-based Pipers Patent and Trademark Attorneys has applied to put Mr Hobbs into bankruptcy over a debt of $183,561. Mr Rose was the director of Hawke's Bay-based Waipa Water, which was put into liquidation in November 2008 after mounting up a $3.48 million debt with Italian packaging machine supplier OCME. Liquidator David Petterson, in his most recent report, said he had identified issues of "serious concern" in relation to Waipa Water. He said he could not say when the liquidation would be complete because investigations were ongoing. In his first report he noted issues including: the fact the land and buildings are subject to mortgage; the water consent was transferred by the director to a company (WRL Holdings Ltd) in which he has ostensible control, that company being the majority shareholder of Waipa Water Ltd; leasehold improvements have been made to the building not owned by the company; machinery is not in the possession of the company and payment remains to be completed. In addition, a Ford Falcon vehicle has been treated as a personal asset of Mr Rose, but is subject to hire purchase. The finance company has agreed to transfer the debt back to the director at the value of the vehicle, as the vehicle and the debt are of an approximate equal value. Mr Rose is listed as a ceased director of Cambridge Accountants Ltd, establish in March this year. His wife, Tina Rose-Dutton, is listed as the director of the company. Attempts to contact Mr Rose were unsuccessful. - Waikato Times Grow Your SMB ir Finish2o14withaBang.FindSales& Marketing Success. Free Der THIS is the Exhibit marked...,.. referred to in pap3-9,raph.,,..../..44..of the attached affidavit of.... DE RED adt...glea/7 of A Solicitor of the High Court of New Ziartfw u.:440 http ://www. stuff co.nz/waikato -times/business/ /Accountants-guilty 18/12/2014

91 SFO sifts ashes of investors left burnt I Stuff.co.nz Page 1 of 1 It.u&a SFO sifts ashes of investors left burnt E5Y NIC CA A BOYES 1..05t updated I,.0,),..4 1v94010 The Serious Fraud Office is reviewing its position on a case that has seen Waikato investors lose millions in an ill-fated tobacco company. Creditors of South American Tobacco Group (SATG) claim they lost up to $6 million and have called the Institute of Chartered Accountants "toothless" for doing nothing about the man behind it. SATG was set up by Te Awamutu accountant Gary Hobbs to supply North Island dairies with cheap cigarettes from Argentina and India. Mr Hobbs, who has refused to comment, is a director of SATG along with Christian Brown and Amit Pujara. Documents obtained by the Waikato Times show SATG planned to build a manufacturing base in Samoa. It also planned to sell its brands, V8 Smooth, V8 Special and Red 1 throughout New Zealand, Australia, India and the Pacific Islands. The company's base was set up in Switzerland for tax purposes. Switzerland's privacy regime also means investors could remain anonymous. A spokeswoman for the SFO said the matter was under assessment. "It was brought up and it was initially turned away but recently there was another matter which was brought up and so it's still under assessment," she said. "We can't give any comment around it at this stage." The Times is aware of people who invested between $70,000 and up to $500,000 in SATG at the suggestion of Mr Hobbs, who was also their accountant, working from the now defunct Hobbs Rose Accountants in Te Awamutu. Mr Hobbs and business partner Shane Rose were struck off the register of chartered accountants in July for conduct unbecoming of an accountant and bringing the profession into disrepute. Mr Hobbs is still operating as GMH Accountants in Te Awamutu. Two investors, who did not want to be named, said the Institute of Chartered Accountants was toothless. The institute was given information from investors, including claims about money withdrawn from investors' bank accounts, but they had heard nothing back despite pressing for information. SATG has now also been served with a statutory demand for $537,000 in unauthorised funds allegedly taken from a family trust bank account. One of the investors the Times spoke to said he invested $100,000 in the venture. He said when people asked for the financial reports of the company they were given nothing. "As soon as you asked for your money back that was it he [Hobbs] turned. "He just keeps coming up with excuses. It just sounds more ridiculous the more you talk about it." Another investor, who said he put in $400,000, travelled to India with Mr Hobbs and considered him a friend. Alongside investing in the company, he also stood as a guarantor for a Customs bond of $180,000. The money was used as security to give SATG a period of grace before having to pay excise tax on tobacco it imported. The $180,000 ended up being taken by the New Zealand Government because the excise was never paid. Mr Hobbs dodged bankruptcy when he appeared in the High Court at Hamilton last week. Auckland-based Pipers Patent and Trademark Attorneys applied to put him into bankruptcy over a $183,561 debt relating to work on the cigarette brands. Mr Hobbs was told he had to settle his debts by October 18. The Institute said it was powerless to investigate any alleged criminal offending. Communications executive Sophia Pech said it was up to clients of accountants to refer any matters they were concerned about to the police. - Waikato Times Age 55+ Obituarie2om Make 10-Day Send with JoinSearch Cruise Your OvExtendeMoney tc Pain? fa, :1. 1, K, Deals CalendaForecastZirnbabv e1tak3, Family HiStOtop.cruise... vistaprint.c weatherblink worldremit... Join hundreand GenealoSave up to It's Easy araccurate 10-Guaranteed of thousandpata- 85% on 20Uniquel FrDay ForecatRates and L., who found Newspaper Cruises $5. Plus ImWeather MEFees. Use C, relief with ttni Collection. FCompare delivery. - Download FREE for Fre new formuli all Prices and Order NowWeatherBlinst Transfer Save Mone Free! THIS is the Exhibit referred to in paragrph...,tr..(ew... of the attached affidavit of... DEC LAR E at... Akan... this day of 8. '713 e me: A Solicitor of the High Court of New ZROOMbil' \OP. IN 18/12/2014

92 E&Y partner found guilty of breaching code I Stuff co.nz Page 1 of 1 gmo ste.% E&Y partner found guilty of breaching code BY JONATI-IAN UNDERHILL. 1..a$t updated 0S:00 2F.VOW20 10 More than a month after the ADC cleared Feltex directors of misleading investors, the Ernst & Young accountant who signed off a review of the failed carpetmaker's 2005 accounts has been found guilty of breaching the Institute of Accountant's Code of Ethics. Gordon Fulton, a partner at the firm, was found to have transgressed the Institute of Chartered Accountants Code of Ethics by signing off on the review when there was insufficient evidence that a breach of loan covenants had been waived and after debt was incorrectly classified as "noncurrent". Feltex was placed in receivership and then liquidation in 2006, just two years after raising $250 million in an initial public offering and listing on the NZX. In dismissing the Registrar of Companies' suit against Feltex's directors last month, Judge Jan Doogue sheeted home blame to Ernst & Young for "failing to adequately advise" the board. Two of six parts of the charge against Mr Fulton were deemed to be proven by the Institute's Disciplinary Tribunal. He was ordered to pay $150,000 costs, though no additional penalty was added to the censure, given his spotless record and lack of deception. Ernst & Young New Zealand disagrees with the tribunal's decision, said Simon O'Connor, the firm's head of assurance, in an ed statement. The charge came down to professional judgment and the lack of additional penalty imposed reflects Fulton's "impeccable record" as an accountant and auditor. "We've previously reviewed the manner in which our half-yearly reviews are conducted and we stand by the quality of our methods," Mr O'Connor said. The tribunal's ruling marks the third time Ernst & Young or its officers have been criticised over the handling of the Feltex account, first highlighted in a late 2007 report from the Securities Commission that led to the review by the accountants' national body. By the time Feltex commissioned the review of its accounts, most of its head office functions had relocated to Melbourne but according to Mr Fulton's evidence, the carpet maker wanted the work signed off in New Zealand "to reinforce Feltex as an iconic Kiwi brand". That meant Mr Fulton ended up putting his signature to a review largely conducted by a colleague in Ernst & Young Australia, Stuart Painter. Still, fault was found with Mr Fulton because he approved the review programme without clarifying the status of the covenant breaches of classification of debt. The Institute of Chartered Accountants said it plans to refer Mr Painter's conduct to the Australian Securities and Investment Commission. The final report from Ernst & Young made no mention of the ANZ Bank loans, nor did the subject arise during a four-hour meeting of Feltex's audit committee on February 16 when the report was considered, the institute's determination says. When the Securities Commission asked Mr Painter why the covenant breaches were not disclosed, he said "the company didn't disclose it, we didn't pick it up". Feltex was in breach of terms of bank debt amounting to about $100m as at December 31, which was incorrectly classified in its accounts as "noncurrent liabilities" when changes to the facilities had given the bank the right to call them in on 30 days' notice. Mr Fulton gave evidence that he regularly read Feltex's board minutes and papers, prior to Ernst & Young accepting the review mandate, including minutes of a board meeting on October 25, 2005 which made mention of the debt facility being changed. - BusinessDesk Grow Your SMB ii Finish2014withaE3ang.Findggles& Marketing Success. Free Der...Pin...d THIS is the Exhibit mrkesl.,,... referred to in parnraph the attached affidavit of... DECLAR D at... itid this day of so<.. A Solicitor of the High Court:000r SW http ://www. stuff. co. nz/business/money/ /e -Y-partner-found-guilty-of-breachi / 1 2/ e me:

93 efrag Or Ikt.0ZettlanO Print nzherald.co.nz Article THIS is the Exhibit to in?razgraph. DECLARED at... def...a (V...of the attached affidavit of...before me: A Solicitor o the High ourt of New Zealando Virk0 NZ@9am: 26/11/10: What NZ Media are reporting at 9am online.4loo 5944w By PETER FOWLER 9:00 AM Friday Nov 26, 2010 NZg9am reports the top stories in New Zealand media online at 9am each business day at The Pike River coal disasters continues to dominate major media web sites in New Zealand at 9am on Friday, with editors now focussing on the effort to recover the miners bodies. Other stories grabbing front page attention are three teens survive 30 days adrift at sea and the election result in Tonga. The Google News New Zealand lead story on Friday at 9am is the nzherald.co.nz story headlined "Latest updates: Pike River mine tragedy." The story says today, officials are considering a drastic, high-tech strategy to recover the 29 bodies inside the Pike River Mine. In other top news it carries a stuff.co.nz story which says three boys in an aluminium dinghy drifted 1300 kilometres across the South Pacific, resorting to drinking seawater and devouring a seagull to survive. The most popular story on Google News NZ at 9am is from the Herald Scotland which says Britain has sent its condolences to the families of 29 men, including two Scots, who were declared dead after a second explosion deep inside the New Zealand mine in which they had been trapped for more than five days. The nzherald.co.nz lead headline online says "Pike River: Grieving father's plea." The paper says he has to accept he has lost a son. But it says Marty Palmer won't give up until he has his son's body back with the family so they can mourn properly. It says New Zealand is a nation in mourning as memorial services are held, condolence books arranged, and candles lit throughout the country. In other news it says Tongan pro-democracy leader 'Akilisi Pohiva will meet his supporters in Nuku'alofa today to discuss forming a new government after yesterday's first democratic elections. The most read story at 9am on Friday on nzherald.co.nz says three Tokelauan teenagers missing at sea for 50 days have miraculously been rescued by a New Zealand fishing boat. The Stuff.co.nz top headline says "We'll go back in, vows mine chief." The web site says the answer is immediate - "I would!". It says Peter Whittall is willing to go back into the bowels of the Pike River mine that has killed 29 of his workmates. It says Pike River Coal's board will meet today to talk about the company's options, after the disaster at its West Coast mine that left 29 men dead. In other news it says a New Zealander who was held up at Heathrow Airport for a day after refusing to get a body scan is returning home. The most read story on stuff.co.nz says three boys in an aluminium dinghy drifted 1300 kilometres across the South Pacific, resorting to drinking seawater and devouring a seagull to survive. The Radio New Zealand lead headline online says "Making mine safe can't be rushed." It says a mining safety specialist warns the process of making the Pike River coal mine safe cannot be rushed. RNZ says much of the West Coast will come to a standstill next Thursday when a commemorative service is held in Greymouth for those who died in the Pike River coal mine. In other news it says South Canterbury Finance's auditor, who gave the failed finance company a clean bill of health, has been fined and censured by the disciplinary tribunal of the Institute of Chartered Accountants. The One News lead headline says "Mine recovery 'gag unit' arrives from Australia." It says specialist equipment intended to make the Pike River mine safe for the recovery of the bodies of /12/2014

94 Print nzherald.co.nz Article Page 2 of 2 miners has arrived in Hokitika from Australia. TVNZ says police say it is impossible to give a time frame for when the bodies of the 29 men lost in the Pike River coal mine disaster will be recovered. The most popular story says Sarah Palin has made another foreign policy gaffe, this time over tensions between North and South Korea, saying "Obviously, we've got to stand with our North Korean allies." The 3 News top story online has the headline "Pike River: Recovery gear arrives from Aus." It says specialist equipment from Australia has just arrived at Hokitika Airport. It says West Coast miners knew their 29 mates at Pike River were a lost cause before the official announcement on Wednesday, a union convener in Solid Energy's nearby Spring Creek pit says. In other news 3news.co.nz says Maori leadership and Maori specific marketing is needed to reduce smoking among Maori, a study has found. And the most popular story for the third day in a row says "First video of mine explosion emerges - Video." The Newstalk ZB lead headline says "Miners worried about the future." It says as help comes from Queensland to recover the bodies of the Pike River miners, other staff are worried about their jobs. It says mine rescue experts from Australia are travelling to the West Coast to help to recover the bodies of the 29 Pike River miners. In other news, NewsTalk ZB reports a 4.2 magnitude earthquake struck 5km from Kimbolton, near Palmerston North at 6.59am, it is not expected to have caused damage. By PETER FOWLER - Hawkes Bay Today Copyright 2014, APN New Zealand Limited 18/12/2014

95 KPMG partner censured for ethics breach I Stuff.co.nz Page 1 of :!OLDIE ROI KPMG partner censured for ethics breach FIQNARQTHERHAM 30 KPMG audit and advisory partner Bill Wilkinson has been censured by the Disciplinary Tribunal of the Institute of Chartered Accountants for breaching the industry's code of ethics. The Auckland-based accountant is the latest in a string of accountants to be censured by the industry's self-disciplinary process in the wake of finance company collapses. The tribunal found that Wilkinson should be censured and ordered to pay costs of $9,577 plus GST after pleading guilty to two charges. The charges relate to breaches of the industry Code of Ethics for a lack of documentation on the audit of a company's financial statements for the six months ended 31 December The company wasn't named and referred to only as X Limited. In its decision, the tribunal said Wilkinson agreed to a proposal as to the penalty, costs and publication. It was not alleged that there was any substantive error in the audit or that the audit opinion was inappropriate, the tribunal said, but the charges solely relate to the lack of sufficient documentation Several other recent disciplinary rulings against high profile auditors include Woodnorth Myers partner Byron Pearson for his audit of South Canterbury Finance, Wanganui-based David Fraser for his audit of Kiwi Finance, Staples Rodway Hamilton partner Christopher Hughes for his audit opinion of Nathans Finance financial statements, and Ernst & Young former partner Gordon Fulton for a half-year review of Feltex Carpet's financial statements. - BusinessDay.co.nz Accredited Ethics C CoveingNZECAsCodedabics.4hourCPD course with PwC Experts. THIS is the Exhibit mail< d.(,./. 1 ff..9.'12, referred to in pa.9rapt)...t aa'...of the attached affidavit of....zrizeia-4,... ce.. DECLAR D at.... z)...this...2,?....day of e x.oz before me: A Solicitor o the i h ourt of New Zealand Se* NleP http :// co.nz/business/industries/ /kpmg-partner-censured- 1.r -18/12/2014

96 Print nzherald.co.nz Article Rih31 Page Zhe Dew Zeit1an6 OcraiO 1 of 1 KPMG partner censured over lack of disclosure 12:22 PM Tuesday Dec 7, 2010 Bill Wilkinson, a partner at KPMG specialising in insurance and investment funds, has been censured and fined for lack of documentation in the audit of a company's financial statements. The 20-year veteran of the firm pleaded guilty to charges relating to two charges related to the accounts of the unidentified company for the six months ended December 31, KPMG's Bill Wilkinson File photo The determination of the Disciplinary Tribunal of the Institute of Chartered Accountants says Wilkinson breached its code of ethics by providing a "lack of sufficient documentation" for his conclusion that a credit impairment provision in the company's accounts was adequate "when the audit work papers indicated that a substantially higher provision was, or might be, warranted." He also provided insufficient documentation for a conclusion that the company didn't need to provide analysis of the expected maturity dates of financial liabilities and assets, the determination said. It agreed to suppress the identity of the company that was audited. Wilkinson was ordered to pay costs and expenses of $9,577. He started at KPMG in New Zealand in 2003, having worked for the firm in the UK, according to its webs ite. - BusinessDesk Copyright 2014, APN New Zealand Limited THIS is the Exhibit marked, referred to in par}nraph.../..../..e....of the attached affidavit of... /(./C/7.(X-6-.6 DECLARED at...7a/...this...day of 1.6M Solicitor of t igh Court of New Z Vet t Ottot.41 `'" gto' old"' 18/12/2014

97 RM 32, Dcw Zra1an6 Print nzherald.co.nz Article Jean Jones caught in new SFO probe 2:42 PM Friday Dec 10, 2010 The swirl of official investigations surrounding failed finance company Rockforte is growing, with the Serious Fraud Office confirming a probe that will almost certainly shed light on the failure of the Jean Jones clothing chain. THIS is the Exhibit mark9d... (7 to in....of the attached affidavi of... Xtt &te:et..t9/40.4 DECLARE at this... of...before me A Solicitor o the High Court of New Zealoirt 0136 sthato NtiegOgt 1 satte' The Gisborne-based lender was placed in receivership in May, owing $3.25 million to 77 investors, all of whom were covered by the Crown Retail Deposit Guarantee Scheme. Photo / Richard Robinson. "Although not large in dollar terms, this is a case that has had a large impact on a local community," the SFO's chief executive Adam Feeley said. "Therefore the investigation fits well with the SFO's objective of restoring public confidence and improving financial security of New Zealand investors, within that community." At the heart of the Rockforte collapse is a series of partially disclosed events involving the Rockforte principals, accountant Nigel O'Leary and Gisborne businessman John Gardner, who are both close friends and distant relatives. O'Leary was also a close business adviser to Michael Ward, the Gisborne-based owner of the Jean Jones women's' clothing franchise, which had 20 retail outlets and, unusually for New Zealand in the 21st century, a local manufacturing base. Bernard Montgomerie, liquidator of two of the Jean Jones companies, has said advances to the Jean Jones retail business accounted for around a quarter of Rockforte's $6.8 million loan book. In April last year, O'Leary to Gardner seized the assets of the Jean Jones company, leaving Ward - a founding family owner - and creditors owed at least $4 million, including a little under $1 million to the Inland Revenue Department. The Securities Commission, IRD, Rockforte's trustee Covenant Trust, Companies Office, the National Enforcement Unit of the Ministry of Economic Development, and the Institute of Chartered Accountants are also all conducting investigations either into Rockforte or the conduct of O'Leary, a long-time friend and financial adviser to Ward. Ward says O'Leary was virtually running the business at the time of the assets seizure. The New Zealand Herald reported in October last year that the liquidator had sufficient evidence to take a complaint to the SFO, with Montgomerie saying: "In my opinion, this has been an orchestrated campaign over at least three years...progressing on to money-washing through the company, and the final seizure of all the assets and failing to account." 18/12/2014

98 Print nzherald.co.nz Article Page 2 of 2 Rockforte is the seventeenth finance that has been investigated by the SFO since Of these, nine investigations are ongoing and, to date, five have resulted in criminal charges. - BusinessDesk Copyright 2014, APN New Zealand Limited 18/12/2014

99 Accountant skimmed $70k off wine firm - business I Stuff.co.nz Page 1 of 1 Rifi33 Accountant skimmed $7ok off wine firm I An accountant and former police officer stole nearly $70,000 from his employer, Marlborough-based Mud House Wines, an industry disciplinary tribunal has heard. Lawrence Peter Ford was referred to the Institute of Chartered Accountants disciplinary tribunal after pleading guilty in the District Court at Christchurch last June on 15 counts of dishonesty to obtain $69,931. He was sentenced to six months community detention, 400 hours community work and ordered to pay reparation of all the money stolen to Mud House Wines. Mud House Wines has vineyards in Marlborough, North Canterbury and Central Otago. Ford failed to appear at the tribunal hearing in Wellington, which found him guilty of bringing the profession into disrepute by being convicted for an offence punishable by a term of imprisonment. He was also found guilty of failing to provide a response to the complaint to the institutes' professional misconduct committee. The tribunal terminated his membership and he was ordered to pay $7087 in costs. Ford had been a provisional chartered accountant since July The tribunal was told that Ford had been employed as a management accountant by Mud House Wines, and was in charge of the day-to-day accounts of the company. Between February 2009 and November 2009 he made 39 fraudulent transactions to funnel the stolen money into his own, or his son's, bank account. The fraud involved altering company employment records to show past employees were reinstated and claiming their pay. Ford also reproduced old invoices from suppliers. He altered the invoice numbers and substituted the bank account details for payment with his own In sentencing. District Court judge Stephen Erber said aggravating features of the offending included Ford's background as a former police officer in Britain, and the fact that the offending was not spur of the moment, but took place over 10 months and had a significant impact on his victims. Ford was given credit for his immediate guilty plea and ability to pay substantial reparations, but his previous good character was offset by the breach of trust, the judge said. - BusinessDay.co.nz Tax Business Accountants All Tax Trusts Accounting Services. Come And Have A Chat With Us Now! THIS is the Exhibit marked.. to in para,graph... z A So cit... referred the attached affidavit of... DECLARED at... 40/..Q?"..th is day of rn vpg...before me. e_dc te t e igh Court of New Zealand,v,siteP 04300's _ A.01% visiewwhttp:// 18/12/2014

100 Print nzherald.co.nz Article Page 1 of 2 Zhe Dew Zralatib KiI/34 Money for nothing By Maria Slade 5:30 AM Sunday Feb 27, 2011 THIS is the Exhibit m...referred to in paiagraph... 4.(aV...of the attached affidavit of...,(.</.-c ha! /2. O6'e-.2 DECLAR D _...this......day of before m' 450 A Solici r of the High Court of New Zealan q tiko AXAC33 W. A North Shore firm which lent money to a concert promoter hoping to make up for a bad debt has called in receivers and lawyers to chase his funds. David Jonkers' company Te Atatu Properties lent $268,000 to promotion business Tour Management Company to help fund musician George Benson's New Zealand tour. Jonkers was already owed $363,000 from other events promoted by Tour Management Company's major shareholder, Brian Richards. George Benson didn't get the numbers at his three concerts. Photo / Getty Images When it found it was out of pocket over the Benson tour, Te Atatu Properties tried to enforce its rights as a secured creditor of Tour Management Company. But before it could do so Richards and the other shareholders put the company into liquidation, appointing convicted fraudster John Gilbert as liquidator. The Herald on Sunday understands jonkers had hoped to recoup his earlier losses by backing the Benson tour. Benson performed in Auckland, Wellington and Christchurch in November. "There were a lot of artists through at that time and lots of other events, so they didn't get the numbers," Jonkers' lawyer Luke Kemp said. When Te Atatu Properties lent the latest funds to Tour Management Company it took out a general security agreement over the firm's assets. Tour Management Company was now arguing that the general security agreement was invalid, Kemp said. Te Atatu Properties has appointed receivers to the company and called in an insolvency law specialist. Tour Management Company liquidator John Gilbert was jailed in the 1990s for 3 years for fraud and struck off the Institute of Chartered Accountants' register. In the past two years creditor opposition to his appointment has led to him stepping down from one insolvency and facing a High Court injunction in another. The first liquidator's report said TMC owed $1.2 million. It said the ventures were financed by taking out loans for each event, paying the lenders interest and a percentage of the net ticket sales. Not all the projects were successful and the company had accumulated significant debts. 18/12/2014

101 Print nzherald.co.nz Article Page 2 of 2 Richards said Jonkers was aware of the financial position and had agreed to pay trade creditors first. By Maria Slade - Herald on Sunday Copyright 2014, APN New Zealand Limited 18/12/2014

102 Print nzherald.co.nz Article 0135 Page 1 of 1 ilthe Dew Zealanb i6eralb SkyCity chooses next chairman 5:50 AM Thursday Aug 4, 2011 SkyCity Entertainment Group has named Chris Moller as its successor to chairman Rod McGeoch, who is to retire at the company's 2012 annual meeting. Moller was appointed to the board in December He is the chairman of Meridian Energy, NZ Transport Agency and New Zealand Cricket, and is also a director of Westpac New Zealand, Rugby New Zealand 2011 and the International Cricket Council. Chris Moller. File photo / Sarah Ivey His term as a SkyCity director is up for election at this year's annual meeting, and his selection as chairman after the 2012 annual meeting is subject to his re-election to the board this year. The board also appointed Adelaide-based Bruce Carter to immediately take up the position of deputy chairman. He is a partner of Ferrier Hodgson in Adelaide and chairman of the Northern Territory's Insurance Office, and is a fellow of the Institute of Chartered Accountants. McGeoch said the board was keen to ensure a clear succession plan for the chairman, given the growth projects the company was focusing on. Copyright 2014, APN New Zealand Limited ectid= THIS is the Exhibit marj<ed..y,,.. i...m.a6...referred to in pa94gr)aph..i... A,../..2,0(71...of the attached affidavit of.../../tywd(:.. _ ozāai,e4/2...<1.7o.(..?... DECL ED at...a/a/7.71w...this......d.a-y-of. r before me: Solicitor of the ig ou rt oideinigh VItegI nd 0,40 SOICIf op, *600-18/12/2014

103 Print nzherald.co.nz Article (rovb e Detti Zealan6 ilia" Tax law change may limit software THIS is the Exhibit marked.../ referred to in para,grapp...../:.4...of the attached affidavit of... 4C.A9'gr....4'.!?.. DECLARED at...&e.01,.60...this...d y of re me: 'z. Solicitor of the High Court of Ne, o... S6`C' e6nd,too stoo By Hamish Fletcher 5:30 AM Wednesday May 18, 2011 Inland Revenue appears not to have considered how a change to tax rules could financially impact software developers. The IRD posted a notice on its website last month saying companies can no longer deduct money spent on unsuccessful software projects for tax purposes. This practice had been allowed since The new rules are a shift in the interpretation of tax law, rather than a change to legislation. Thomas Pippos, managing tax partner at Deloitte. Photo / Supplied The IRD justified the new approach because failed software is not directly part of the income-earning process. Industry players said the move could stifle innovation and make companies hesitant to start software projects. In response to queries, the IRD said the notice "seeks to clarify the taxation implications in relation to software development to assist taxpayers and their advisers". "Inland Revenue is not in a position to comment beyond this as to any possible specific commercial implications," the department said. However, Deloitte managing tax partner Thomas Pippos said the IRD should have "thought more laterally" about it if it needed to change its tax policies, rather than just altering its interpretation. "The crux of the matter is that the department is a very large machine. Each part of the department has a role of a job that they actually do. What strikes us is that only one part of the department [appears to have] reflected in relation to this matter and the department as a whole didn't consider the correct overall decision," Pippos said. "The one thing [the IRD] might not appreciate in this instance is the magnitude of the amounts that are actually involved [for businesses]," he said. Pippos argued that although the rules will not affect all software businesses, for those it does touch it could be worth millions of dollars. "This is not an immaterial tweaking of the law. As far as corporates are concerned this is a material policy change," he said. Pippos said from what he could tell, the IRD did not consult the industry before making the change. 18/12/2014

104 Print nzherald.co.nz Article Page 2 of 2 The IRD said it provided an advance copy of the notice to both the Law Society tax committee and the Institute of Chartered Accountants. By Hamish Fletcher - NZ Herald Copyright 2014, APN New Zealand Limited 18/12/2014

105 The fall of a fraudster Stuff.co.nz Page 1 of 1 The fall of a fraudster For lease: The Institute of Chartered Accountants suspended Soffe. He built the mansion, above, with funds siphoned from the trust. Tony Wall has been investigating how Hamilton accountant Gary Soffe was able to steal millions of dollars from a family trust to fund a lavish lifestyle. A HAMILTON accountant who has admitted stealing more than $4 million from a family trust may have stolen millions more, but has destroyed documents that could unravel the full extent of one of Waikato's biggest frauds. Gary William Soffe, 52, siphoned millions from the trust to fund a showy lifestyle, capped with a sprawling mansion he built on the outskirts of Hamilton. Soffe spared no expense on fitting out the Tamahere property trappings included a pool, hydro-slide, astro-turf tennis court and $80,000 sound system but in the end his excesses proved his downfall. The IRD began investigating why his assets far outweighed his income, and Soffe's house of cards came crashing down. Soffe pleaded guilty to nine charges of theft by a person in a special relationship, and one of false accounting dating back to 2006 when he appeared in the Hamilton District Court last week. But the Star-Times understands the $4m covered by the charges is just the tip of the iceberg. Soffe was the sole administrator of the trust going back to the 1990s with one elderly trustee, who had little to do with running it and began building up his own property portfolio in the early 2000s. Don Shirley, a director of law firm McCaw Lewis, which acts for the trust, said the firm's forensic investigation had been made difficult by the "unavailability" of trust accounts preceding April 1, He said Soffe admitted destroying documents. The Star-Times understands he may have been doing so until recently. Prospective buyers who visited his mansion with a real estate agent noticed files from a box marked "trust 2" were being burnt in an outdoor fireplace. Meanwhile, questions are being asked about McCaw Lewis's handling of the case, after it waited more than three months to notify police of the fraud. The Star-Times first heard of the fraud several weeks ago, but at that stage police had not been notified. They were told only the week before last. McCaw Lewis is believed to have confronted Soffe about the thefts in early February, and he confessed. The firm then held a meeting with Soffe and his lawyer to discuss a reparation plan. Over the next couple of months, property with a combined rateable value of well over $6m was handed back to the trust and is now on the market, including the Tamahere home, a beach house in 1Nhangamata, an apartment in Mt Maunganui and a commercial building in Auckland. The Institute of Chartered Accountants was notified of the fraud in April and suspended Soffe, prohibiting him from holding himself out as a chartered accountant, but still police were not told. The Star-Times understands the sole heir to the fortune, an elderly Wellington woman, wanted to avoid the publicity of criminal charges. Her family's name has been suppressed. The trust owns tens of millions of dollars worth of farms and commercial property in Waikato and Auckland, and also has a charitable arm. Asked why McCaw Lewis took so long to notify police. Shirley said: "We act for the victim, that's where our commitment is. "We carried out a very detailed forensic report, and that took time." Shirley confirmed the trust would keep all the proceeds of the sale of Soffe's properties, but could not put a figure on the total it was hoping to recoup. It is understood the firm was not aware that Soffe had other luxury assets, such as a boat kept at Whangamata. Sources said last week he also kept a boat in Fiji. He continues to live in the Tamahere mansion while awaiting sentencing in July. Trust expert John Brown said the Soffe case was a warning to trustees that they should not delegate their responsibilities to another trustee. "Often family trusts are run very casually, but there is a need for trustees to keep a watchful eye. It's important that each trustee is actively involved "You shouldn't just be leaving it to the other parties." Peter Preece, a senior forensic accountant with the police's financial crime unit, said two common themes with accountants who committed fraud was that they did so over a long period, sometimes more than a decade, and they had a high rate of reoffending. "They don't get picked up, that's the thing. Basically, the clients don't know they've been defrauded, or often don't even believe they've been defrauded. "If you say to them, 'He's pinched your tax refund', they say 'No. he couldn't have, I've known him for 20 years'." - Sunday Star Times Apply For a Credit RevvardYourserwithTravel,Points& Exclusive Offers. Apply TodE THIS is the Exhibit marked,...,. referred to in the attached affidavit DECLARED at.. t.k./z(./.24,/;e:7...this Selten Solicitor of the High Court of New Zealaa0 Var SOk 6,. t 041Q-c, /The-fall-of-a-fraudsWig/ 1 2/2014 of before me:

106 0038 Ebe &hi Zealatil 34e Print nzherald.co.nz Article gri) sg THIS is the Exhibit marked referred to in paragraph,....of the attached affidavit of..../v.v2.4. akerzi(2./?(?... DECL ED at....erway.7...this day of 14-Z befosrl;ono Solicitor of the High Court of New Zealand 40,A0C144 Damien Grant: Duties abrogated in murky world of second-tier finance 5:30 AM Sunday Jul 17, 2011 The Nathans Finance trial was an eye-opening insight into the murky world of our lamented and recently departed secondtier finance industry. How could it have got to this and who enabled it? Justice Heath's 156-page deconstruction of Nathans Finance makes for an interesting and, at times, entertaining read. Nathans Finance was a subsidiary of VTL, a firm developing vending technology products. Nathans raised money from the Mervyn Doolan Photo / Dean Purcell public, ostensibly for lending to third parties but, in reality, most of its lending was to VTL. John Hotchin emerges as a key player in this dysfunctional circus. Described as "aggressively commercial" by one witness, it was a description Heath suspected Hotchin would wear as a badge of honour. At one stage, Hotchin ed his displeasure at a draft prospectus: "I strongly urge that the RISK section is changed as if this is going to market NO cash will come in." It was over the content of these prospectus documents that the directors were charged. The Securities Commission alleged that they were misleading and the court agreed. Although the directors may have believed the information that went to market, they had no basis for that belief. In essence, they abrogated their duties as directors to others: specifically, their management, auditors, other directors and the trustee. Heath colourfully gives his own version of how the prospectus should have read, starting: "The main purpose of the offer is to provide working capital to Nathans' parent company... " The directors needed to be held to account but there is also an issue whether Nathans Finance was enabled by the very institutions we seek to prevent such failures, including the Securities Commission and auditors. The commission is defunct so there is no point dwelling on its role (or lack of one) but it is interesting that they offered a deal to Hotchin and not to other directors. Did someone with intimate knowledge of the matters that ought to have been disclosed to investors get a lighter ride? Nathans Finance is in receivership and it is pleasing to see receivers PricewaterhouseCoopers state they are suing the directors, as well as Nathans' auditors, for a breathtaking $73 million. The Institute of Chartered Accountants has already fined the audit partner concerned $163,000, although you have to wonder what happened during the last practice review. 18/12/2014

107 Print nzherald.co.nz Article Page 2 of 2 This was a small Hamilton firm auditing a large, complex and international finance house. Perhaps they thought the alarm bells were from the local rugby game. Law firm Turner Hopkins is seeking investor support to sue the trustees. I wish them, and PwC, success. - Herald on Sunday humanist (New Zealand) I 12:55PM Sunday, 17 Jul 2011 Who can we look to for answers? Law Commission for introducing a regulatory environment that allows NZ law (or it's interpretation) to protect the backsides of lawyers, accountants and their insurers under the 'guise' of 'client' & legal privilege. justawomen (New Zealand) I 12:55PM Sunday, 17 Jul 2011 The offenders are those who hide their actions behind the reputations of 'good lawyers' and 'law firms'. There are more lawyers in NZ who do care about upholding NZ law than not, they usually work in law firms. But sadly there a few 'bad' ones have muddied our legal waters and use their position for nefarious purpose. The judiciary are clearly not prepared to accept this, which gives me renewed confidence in our legal system. M Lowe (Remuera) I 12:55PM Sunday, 17 _Jul 2011 Seriously, prior to the collapse, my letterbox was assailed by a blitzkrieg of Nathans Finance's aggressive begging letters. All of the material resembled promo pamphlets from the likes of JB Hi-Fl and the like: brightly colourful, glossy, cheap and tawdry. That was a sure-fire warning sign that something was seriously awry. Copyright 2014, APN New Zealand Limited 18/12/2014

108 Bob Jones wins $4m over bad tax advice - business Stuff.co.nz Page 1 of 1 AA= Bob Jones wins $4m over bad tax advice 4E', i Property tycoon Sir Robert Jones and a related trust have won a $4 million negligence case against their former accountants. Sir Robert ties for 15th place on the NBR Rich List announced last night, with an estimated $400m. The accountants he sued, a forerunner of WHK Wellington, admitted a mistake had been made and the court case that followed was about the extent of Sir Roberts loss. WHK Wellington managing principal Richard Burge agreed that telling Sir Robert about the mistake had been an awkward moment. The error was identified in-house and they had had a "chat" with Sir Robert in February 2009 to let him know about it, Mr Burge said. The error had happened when Sir Robert was a client of the Lower Hutt firm Sherwin Chan and Wa'she, which later joined the major Australasian accountancy group WHK. It is not yet known if this week's High Court judgment, for $4.28m plus an unspecified amount of interest, would be appealed against, Mr Burge said. It is understood the decision whether to appeal would take into account that Justice Christian VVhata, in his first case after becoming a judge, made factual findings that could be hard to change on appeal. Sir Robert, corporate trustee Yorgen Holdings, and Tirohanga Family Trust took the case. Justice VVhata said Sir Robert effectively controlled the trust, which currently had rental income of up to $1 00m a year. They sued Sherwin Chan and Walshe and WHK when it emerged they were not warned of the full tax implications of rearranging financial affairs between Jones group companies and trusts in New Zealand and in Australia. The mistake was discovered after IRD started an audit of the group's affairs in September "Unsurprisingly, SCW notified its legal advisers," Justice VVhata noted in his judgment. In his evidence Sir Robert had said that if he had been properly advised, he would not have restructured the group in the way it was. The total extra tax that was paid was $4,285,308. The accountants admitted some relevant advice had not been given, but defended the claim against them in court on grounds that included that the accountants who advised Sir Robert on their mistake also gave him bad advice. Justice VVhata agreed that the second accountants had been wrong in one respect but said that had to be seen in the wider context of risk management. It did not break the link between the original advice and the loss. The judge rejected an argument that the tax benefit from the competent part of WHK's advice could offset the loss resulting from the negligent part. Institute of Chartered Accountants professional support director Tom Davies called the judgment a "reasonable size" and said he was sure WHK would be insured. Insurance cover would normally include the consequence of giving negligent advice, he said. "Mistakes can happen." It was hard to know how often legal claims were made against accountants as most did not end up in court. he said. During the hearing of the case earlier this year Sir Robert said his investment strategy was for available money to be invested in property, although when pressed he said that from time to time up to $8m cash was left "lying around". - The Dominion Post Tax Business Accountants All Tax Trusts Accounting Services. Come And Have A Chat With Us Now! THIS is the Exhibit marked., referred to in paragrph..,,. the attached affidavit of... frf.t.q.efefr. DE LARED at..r/g/4179,.. of...before me: A Solicitor o the High Court of New iedilbirdkr?'' f_er AO& 18/12/2014

109 Ths tleview / April 5, 2012 ioes'ihe F LPH.H VXCEt Watching the watchers is about to get really interesting WI rat, no fluffing and pulling over the new auditor registration and licensing regime about to come into force? That's hardly a surprise given that members of the auditing profession are keeping their heads down as the finance company debacle goes through the courts. But when you drill clown into new legislation there are some major structural changes that will pose Significant difficulties for many of the smaller accounting firms. Shoeshine notes that the main provisions of the Auditor RegulationAct come Into force on litlyt Section 32 of the act permits the Financial Markets Authority to prescribe various regulatory requirements, including those relating to the licensing of auditors and registration of audit firms, transitional requirements, and competence requirements for licensees and requirements for accredited bodies For those working In the assurance area this is serious. There are two major planks to the new regulation. One is that to be an auditor of companies that issue shares or debt you will now have to be licensed. There Is a two-year grace period from July 1 where you can earn your spurs but it's going to be a stiff test all the same. The main hurdle is that auditors will have to have a certain amount of hours on the dock-about 250 hours missiles& or similar full IRIS entities. This is required in 'demonstrate competence" that they are up to date around the regulatory and reporting regimes. And the hours must be personal time, not delegated to another partner. Shoeshinereckons this could force a fair number of people out of the licensed auditing business. Secondly, to become a registered firm basically requires an overhaul of governance structures, including auditor rotation policies, risk management and fighter billing systems. Even quite substantial firms like Pulsen Higgs and Staples Rodway and PRE may be quite challenged. Firms will be subject to practice review by the Institute oft :flattered /Wein intim is, on behalf of the FMA, which has delegated that role back to the institute. However, the FMA retains the right to over tile and intervene directlyif it doesn't think the job is being done well enough. Shoeshine reckons the new regime is well overdue and it will be interesting to see who makes it and who doesn't over the next couple of years. Watching the watchers just got a lot more interesting r,tr f 1TL AWARDS vornit.sneraysiveres.00.nz Over-eupoty o fowl/ors reeks capital Wellingtoniens are at tar greater risk of living next door to a lawyer than anywhere e/sn in New Zeeland. Law Society figures reveal one in every 88 Wellington people is a lawyer, nese than tout time the national avenge of one lawyer for every 390 other people. Wellington's lawyer-giut ft Mined on a Ngh number ce them svottdng for the government and business The second moshawyered {make Is Skterievotth, with a one in 194 lawyer to ordinary person ratio Auckland has one lawyer to every 308 other folic Safest almcet-lawyeeiree places to Ihre are Kawerau (one In 7000), Wairoe (one in 4100). Taihapa (one in 2000) end Maurice (one in 1800). Lawyer-worm lc& should not consider moving to the District of Columbia - seat of the United States government - whore ono In event 36 citizen re as lawyer. And sag nothing Is done about it... Get Their Honours' names right ethers es anything, which Inflames the affective noddle of the judiciary, it Is getting Their Honours' nerves and ranks wrong, something lesser hacks do with gay abandon it seems. Chewing the fat with Private Bin the other day, Auckland High Court's Justice Raynor Asher pondered &NA on the weighty topic. 'Why can't they get It right, B1n7 Judges in the district court are called judges. We in the superior' courts as called justices. And If they must use ow Christian names - not something all of us are happy with - they should at lees* spell them correctly,." Private Bin couldn't agree more, Your Honour. Whatever else you say about me, get my name right, as the actress said la the Bishop. At which point we agreed, lest folk got the wrong Wee, to supprtes the met of our chat, Down the!tunny THIS is the Exhibit marked/ i.q.' referred to in pagraph,,.(:.q ).....of the attached affidavit of.... eie.4a... i..xy,a. 4. c(49....aq(.,...,,,.,,,... DECLARED at...g.glia?.(2...this,,...g d.i:-... e A o/4..._ AO o icitor of the High Court of N - a, r Nt101161% 1/4. f e me:

110 RA9 41 This page has been modified for the purposes of section 9(2)(b) of the Official Information Act 1982 because it contained material that appeared to be commercially sensitive. THIS is the Exhibit ma.0<0.,...f./ referred to in pnagrapt)...i.:.4-. (.6.97,...of the attached affidavit This page has been modified for the purposes of... taik.4&. of section 9(2)(b). of the Official Information Act 1982 because it contained DECLARED material at...aie this that appeared to be of e: commercially sensitive. Solicitor o the High ou of and wongton

111 RM 42 Accountants struck off i The National Business Review Page 1 of 3 Te h Meeting Plane of Intelligent &sinus Business Markets Property Media Politics T Homo Hot topics 3 THIS is the Exhibit marked e.f.r referred to in p45agraphi..../:it.1ff...of the attached affidavit of...mwd/ar....e.<1.. DECLARED at......this day of aletm6:e before me: A olici or of the High Court of New Zealap41% 4$0161. it Advertise Contact Help Pilot edition & archive Subscribe Lop in rkt4w X 90111:40 Accountants struck off CALEB ALLISON FRIDAY SEPTeMBER 21, Q 4 SHARE Three accountants, including failed finance company directors Rob Roest and Anthony Walpole Bowden, have been struck off by the Institute of Chartered Accountants disciplinary tribunal. The third is Robert Philip Bell, a Tirau accountant who failed to keep up with the tax obligations relating to two of his companies, which were subsequently liquidated. All three cases were brought before the tribunal in a disciplinary hearing on Wednesday, although Bowden was the only one who turned up. A fourth accountant had a disciplinary case heard, but the tribunal will wait 14 days to release its decision because the member, whose name is suppresed in the meantime, may appeal. The institute's professional conduct committee (PCC) told the tribunal it wanted all the accountants struck off. Bridgecorp director Roest was sentenced in May to six and a half years in prison. The tribunal agreed with the PCC's striking off request, saying: "Acting dishonestly with intent to deceive the public, as the Court found, is incompatible with membership of the institute." Roest was also ordered to pay costs of Similarly for rive Star Finance director Bowden, the 'tribunal found his actions were serious enough to warrant striking off, and he was also ordered to pay costs of $4300. While Robert Philip Bell did not set out to deceive the public, people needed to be protected from his continued "mismanagement" of his own affairs, which "brings discredit to the profession". 29/10/2014

112 1 October 2014 HENRY HUGHES IP LIMITED PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We thank the opponent for providing the office with a copy of the notice of appeal. We await confirmation of the outcome of the appeal in due course. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs

113 In the High Court of New Zealand CIV // 26k Wellington Registry CIV Under the Trade Marks Act 2002 In the matter of an appeal from a decision to permit cross examination under section 160(1) of that Act Between New Zealand Institute of Chartered Accountants Appellant And The Chartered Institute of Management Accountants Respondent Notice of appeal Dated 30 September 2014 Next event date: Judicial officer: KENSINGTON SWAN 89 The Terrace Ph PO Box Fax Wellington 6143 DX SP26517 Solicitor acting: Hayden Wilson / hayden.wilson@kensingtonswan.conn Counsel acting: Helen Cull QC

114 May it please the Court: 1 The New Zealand Institute of Chartered Accountants ('NZICA'), the appellant in this proceeding, gives notice that it is appealing to the Court under section 170 of the Trade Marks Act 2002 (the 'Act') against the decision of the Assistant Commissioner of Trade Marks dated 3 September Grounds of appeal 2 The specific grounds of this appeal are: 2.1 The Assistant Commissioner erred in law in determining (at paragraph [75]) the appropriate test for whether cross-examination should be permitted in proceedings opposing an application for a trade mark under the Trade Marks Act The Assistant Commissioner erred in fact and in law, by permitting crossexamination of Mr Moon in respect of all matters described as Reason 1 and Reason 2, when: Reason 1: (a) the matter described as Reason 1, 'the production of a signed strategic alliance agreement,' is a collateral issue, namely one of discovery (not of contradiction), which does not go `to the heart of the matter' nor to the substantive issue for determination and does not provide a good and sufficient reason to permit cross-examination on a collateral issue. (b) (c) (d) (e) permitting cross-examination to test a witness's credibility on this discovery issue is contrary to ss 7 and 8 Evidence Act 2006 and an error of law, because such evidence is irrelevant, unfairly prejudicial and inadmissible. the evidence sought to be adduced by crossexamination, is intended to be used for an illegitimate or collateral purpose, namely, to injure a witness's character, reputation and standing. the Office had refused the applicant's request for further discovery and the applicant had neither appealed or reviewed that decision. the onus on the applicant to substantiate its claim has been reversed; namely, the applicant, not the opponent, must discover and produce the document on which it relies to make its application and to produce evidence that such a purported alliance agreement was actually signed in 2006 and was not a mere draft. 1

115 (f) (g) the onus of explaining the whereabouts of a document, (on which the applicant relies but which has not been found), has been placed on the opponent, contrary to legal principles and practice. the contents of the 'alliance agreement' does not advance the interpretation contended for by the applicant; is irrelevant to the substantive issues and has no probative value. Reason 2: (h) the matter described as Reason 2, 'the unsubstantiated factual assertions,' namely, that 'members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants' and that 'any cobranded publications included the word CIMA together with the opposed mark,' are assertions which can be otherwise addressed by written evidence and further documentary evidence. (I) the opponent's witness has expressed an opinion, based on his experience, which can be either accepted or rejected, or given such weight as the Commissioner decides, but is not a compelling reason to permit crossexamination. 0) when the assertion about co-branded publications was not contradicted by the Applicant. (k) the assertion is neither central to the case or of such gravity, to warrant cross-examination as to the witness's credibility or veracity. Reason 3: (I) to the extent that the Assistant Commissioner reserved the Applicant's position in respect of Reason 3, which is denied, that is an error of law as set out in 2.2 (a) to (k) above. 2.3 The Assistant Commissioner has erred in law, by permitting cross-examination, in the absence of 'good' or 'compelling reasons' to so permit; where there were no contradictions going to the heart of the matter; and where cross-examination in trade-mark proceedings should be permitted rarely. Judgment from the High Court 3 The appellant asks that the High Court make orders: a reversing the decision of the Assistant Commissioner of Trade Marks in relation to cross examination under section 173(a) of the Act. 2

116 b c exercising the power of the Commissioner under section 160(2)(a) of the Act to decline the applicant's request to permit cross examination under section 173(b) of the Act. awarding costs and disbursements in this appeal in favour of NZICA. Dated 30 September 2014 P Wilson olicitor for the appellant 3

117 IN THE INTELLECTUAL PROPERTY OFFICE OF NEW ZEALAND [2014] NZIPOTM 40 IN THE MATTER of the Trade Marks Act 2002 AND IN THE MATTER of trade mark application no THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in classes 9, 16, 35, 36, 41, 42 and 45 in the name of THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS Applicant AND IN THE MATTER of an opposition by NEW ZEALAND INSTITUTE OF CHARTERED ACCOUNTANTS Opponent Hearing on 26 June 2014 D Marriott and E Szentivanyi for the Applicant Decision on the papers for the Opponent

118 Page 2 of 40 Introduction 1. This is an interlocutory decision in respect of an application to crossexamine one of the opponent s declarants in trade mark opposition proceedings. 2. The relevant trade mark application, no , was filed by The Chartered Institute of Management Accountants (applicant) 1 on 11 October The opponent is the New Zealand Institute of Chartered Accountants (opponent). 4. The trade mark in issue is a word mark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS (opposed mark) The opponent is the owner of the following registered trade marks ICANZ; 5.2 CHARTERED ACCOUNTANT; CHARTERED ACCOUNTANTS; 5.3 ; 5.4 ; 1 The Chartered Institute of Management Accountants is the applicant both in terms of the substantive trade mark application and the interlocutory application for cross examination. 2 Heasman 1, paragraph 3. 3 Ibid. 4 As at the date of its notice of opposition, being 29 June TM No

119 Page 3 of ; 5.6 NEW ZEALAND INSTITUTE OF CHARTERED ACCOUNTANTS CATALYST; and The opponent also asserts common law rights in the following unregistered trade marks: Institute of Chartered Accountants of New Zealand; 6.2 New Zealand Institute of Chartered Accountants; 6.3 NZICA; and 6.4 Institute of Chartered Accountants. 7. The Trade Marks Act 2002 (Act), and the regulations made under that Act (Regulations), apply to these proceedings. Background 8. The present cross-examination issue is the second interlocutory issue raised in this proceeding. The first was the applicant s request for the production of a document by the opponent. 6 That application is relevant to the present interlocutory application, and in some respects appears to have been the genesis of the application before me now. The applicant described the requested document as a signed copy of the strategic 5 Notice of opposition, paragraph 3. 6 Dated 8 March 2013 and filed pursuant to Regulation 31 of the Trade Mark Regulations TM No

120 Page 4 of 40 alliance agreement between NZICA and CIMA executed in 2006 (the Agreement) The Intellectual Property Office of New Zealand (the Office) granted the applicant s request and required the opponent to produce the Agreement in a format complying with section 160(1) of the Act The statutory declaration of Mr Richard Moon was then filed on behalf of the opponent in response to the application for the order to produce a document. 9 Mr Moon is the opponent s General Manager of Regulation and General Counsel. 10 In his declaration Mr Moon states that he has not been able to locate the Agreement despite taking steps to comply with the order for production of that document. 11 Mr Moon s declaration also describes the steps taken to locate the Agreement In response to Mr Moon s declaration, the applicant filed a further application for a direction to produce documents. 13 The further documents requested relate to the steps Mr Moon took in his attempt to locate the Agreement. For example, the requested documents include Mr Moon s to the opponent s staff querying the location of the Agreement, and the responses to his The opponent submitted that it should not be required to produce the further requested documents. 15 The opponent maintained it had taken reasonable steps to try to locate the Agreement. 16 It submitted that the Agreement was only peripheral to the subtantive case in this proceeding, and that the further requested documents are not relevant to the current proceeding Application for direction to produce document, at 2. 8 Letter from the Office to the parties dated 22 March Section 160(1) provides that evidence in any proceeding under the Act before the Commissioner must be given by affidavit or statutory declaration in the absence of directions to the contrary (subject to any regulations). 9 Dated 23 April Moon 1, paragraph Moon 3, paragraph Moon 3, paragraph Dated 1 July Application for direction to produce documents, paragraphs 5.1 and Letter from counsel for the opponent (Kensington Swan) dated 15 July 2013, paragraph Ibid, paragraph Ibid, paragraph 3. TM No

121 Page 5 of The Office refused to issue the further direction. 18 The grounds for this decision included that the Office: was satisfied that the opponent had taken reasonable efforts to locate the Agreement; and 13.2 considered that the further requested documents are not relevant to the substantive proceeding because the steps taken to locate the Agreement do not go to the matters in question. 14. The applicant then requested that the Commissioner exercise her discretion to permit cross-examination of Mr Moon at the substantive hearing (under section 160(2)(b) of the Act). 20 One of the aspects of Mr Moon s evidence, which the applicant seeks to cross-examine him on, directly relates to the earlier applications for production of documents: 21 The Applicant may ask the Commissioner to draw an adverse inference from the response of the Opponent to the Commisioner s request for production of further documents, including in particular the process followed by Mr Moon in his attempt to locate the requested document;. 15. Somewhat lengthy correspondence between the parties and the Office ensued. In summary, the opponent opposed the application to crossexamine Mr Moon 22 and the Office refused the request for crossexamination The applicant then requested a hearing on the decision not to order crossexamination, which took place on 26 June Counsel for the applicant appeared at the interlocutory hearing and filed submissions in advance of the hearing. The opponent advanced its position on the interlocutory application by way of informal submissions in 18 Letter from the Office to the parties dated 29 July Ibid. 20 Letter from Henry Hughes to the Office dated 20 September Submissions of counsel for the applicant on refusal of request for cross-examination of deponent, 23 June 2014, paragraph 2.1. The other aspects of Mr Moon s evidence upon which the applicant wishes to cross-examine are outlined below. 22 Letter from Kensington Swan to the Office dated 7 November Letter from the Office dated 18 February Letter from Henry Hughes dated 3 April TM No

122 Page 6 of 40 its correspondence with the Office. The opponent was not represented at the hearing and elected not to file any formal written submissions. Pleadings and principal issues in the substantive proceeding 18. The issues for determination in the substantive proceeding provide important context to the question of whether cross-examination should be allowed. 19. The principal issues in question in the substantive proceeding arise out of the pleadings. In particular, the opponent raises the following grounds of opposition: 25 Ground no. Summary of the allegations Act reference 1 Use of the opposed mark would be likely to deceive or cause confusion. Section 17(1)(a) 2 Use of the opposed mark would be misleading or deceptive or would be likely to mislead or deceive and would be contrary to sections 9, 13 and 16 of the Fair Trading Act Section 17(1)(b) 3 Use of the opposed mark on or in connection with goods and services which may be provided under that mark will cause the same to be passed off as goods or services of or associated with the opponent. Section 17(1)(b) 4 Use of the opposed mark constitutes improper use of terms implying membership of the opponent and would be contrary to section 14 of the New Zealand Institute of Chartered Accountants Act Section 17(1)(b) 5 The opposed mark is not a sign capable of distinguishing the applicant s goods and services from those of another person, and in particular those of the opponent, within the meaning of section 5 of the Act. Section 18(1)(a) 25 Notice of opposition dated 29 June 2012, paragraphs TM No

123 Page 7 of 40 Ground no. Summary of the allegations Act reference 6 The opposed mark has no distinctive character. Section 18(1)(b) 7 The opposed mark consists only of signs or indications that may serve, in trade, to designate the kind, quality, intended purpose, value or other characteristics of the applicant s goods and services. Section 18(1)(c) 8 The opposed mark consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade. Section 18(1)(d) 9 The opposed mark is identical to one or more trade marks belonging to the opponent, and that are registered, or have priority to the trade mark application, in respect of the same goods or services, to those of the applicant. Section 25(1)(a) 10 The opposed mark is similar to (or an essential element of) one or more trade marks belonging to the opponent, and that are registered, or have priority to the trade mark application, in respect of the same goods or services, or similar goods or services to those of the applicant and use of the mark is therefore likely to deceive or confuse. Section 25(1)(b) 11 The opposed mark, or an essential element of it, is identical or similar to the opponent s trade marks, that are well known in New Zealand in respect of goods and services that are identical or similar to the applicant s goods and services, and use of the opposed mark on the applicant s goods and services would be taken as indicating a connection in the course of trade between the applicant s and the opponent s goods and services and would likely prejudice the interests of the opponent. Section 25(1)(c) 12 The applicant is not the owner of the opposed mark in New Zealand. Section 32(1) TM No

124 Page 8 of The applicant denies, and/or pleads that it has insufficient knowlegde to respond to, every ground of opposition outlined above. 26 Evidence 21. As would be expected, no evidence was filed in support of the interlocutory application to cross-examine. However, the following evidence filed by the opponent in this proceeding is relevant to the issue of whether crossexamination of Mr Moon should be allowed: Name Occupation Date of evidence In support of Reference Richard Brandon Moon Opponent s General Manager of Regulation and General Counsel 8 October 2012 Opposition Moon 1 Richard Brandon Moon Opponent s General Manager of Regulation and General Counsel 20 December 2012 Opposition (in reply) Moon 2 Brandon Moon Opponent s General Manager of Regulation and General Counsel 23 April 2013 Response to application for order to produce document Moon The applicant s evidence, which is relevant to the present interlocutory issue is as follows: Name Occupation Date of evidence In support of Reference Maggie Heasman Applicant s Head of Corporate Affairs 4 December 2012 Trade mark application Heasman 1 Maggie Heasman Applicant s Head of Corporate 25 February 2013 Application for order to produce Heasman 2 26 Counter-statement dated 7 August 2012, paragraph 9. The only allegations made in the notice of opposition, which the applicant admits are that the opponent is the owner of the collective and standard marks set out in Schedule 1 to the notice of opposition and that the opposed mark has been accepted for registration as detailed in Schedule 2 of the notice of opposition (Counterstatement, paragraph 8). TM No

125 Page 9 of 40 Name Occupation Date of evidence In support of Reference Affairs document Legislative framework 23. The relevant statutory provision is section 160 of the Act, which provides: 160 Mode of giving evidence in proceedings before Commissioner (1) Subject to any regulations, in any proceeding under this Act before the Commissioner, the evidence must be given by affidavit or statutory declaration in the absence of directions to the contrary. (2) However, despite subsection (1), the Commissioner may- (a) take oral evidence instead of, or in addition to, evidence by affidavit or declaration; or (b) permit a deponent or declarant to be cross-examined on his or her affidavit or declaration. 24. The Act does not provide any guidance in respect of the exercise of the Commissioner s discretion to permit cross-examination. 25. The Regulations are silent in respect of cross-examination before this tribunal. Onus of proof 26. The Act does not specify with whom the onus of proof rests or the standard of proof required. However, it is commonly understood that the party seeking to cross-examine in trade mark proceedings has the onus of establishing that cross-examination should be allowed. 27 Therefore, the onus in this case is on The Chartered Institute of Management Accountants (the applicant in both the substantive and interlocutory matters). 27 For example, Permo [1985] RPC 597 at 600. TM No

126 Page 10 of In Kidax [1959] RPC 167 Evershed MR described the onus as a substantial onus of proof to discharge. 28 Approach adopted by the Office 28. In declining the request for cross-examination the Office adopted the following approach: 28.1 The Office started from the position that the Act requires all evidence to be given in written form, and leave to cross-examine a declarant under section 160(2)(b) will only be granted where compelling reasons are presented, which establish: there is good reason for cross-examination; 29 or that the evidence could not have been otherwise provided in writing The Office went on to say that, generally speaking, cross examination will only be permitted if the office is satisfied that there is genuine concern as to the credibility of a witness or the veracity of written evidence, or where there is a contradiction between written evidence submitted, which cannot be resolved other than by cross examination. 31 Approach the applicant submits should apply 29. The applicant submitted that the approach adopted by the Office sets the threshold for allowing cross-examination at a level that is too high. At the hearing, counsel for the applicant contended that the threshold should be 28 At Although not referred to by the Office, this limb of the test applied by the Office is consistent with the statement of the Commissioner in NZ Optical (Wholesale) Limited v Hannaford and Burton Limited [1980] NZIPOTM 5 that I certainly do not think they [the giving of oral evidence and the cross-examination of witnesses] should be allowed unless good and sufficient reasons are given to enable me to decide if it is right so to do. 30 Letter from the Office to the parties dated 9 October Ibid. An almost identical approach was adopted by the Office in what appears to be the only decision of this tribunal on whether cross-examination should be allowed under the current Act: DB Breweries Limited v Society of Beer Advocats, Inc [2011] NZIPOTM 19 at [22]. In that case the Assistant Commissioner approved of the approach taken by the tribunal although neither party disputed that the Office had adopted the correct approach. TM No

127 Page 11 of 40 approaching a level whereby cross-examination is available as of right, and that provided the application for cross-examination is based on some principled reasoning, cross-examination ought to be available. To the extent the Commissioner may not agree, or cross-examination turns out to be meritless, the applicant submitted that could be remedied by costs on final determination. 30. In its written submissions the applicant describes the Commissioner s discretion (under section 160(2)) as an unfettered one in the sense that the Act provides no limitations upon the manner in which, or reasons for which, the discretion may be exercised. 32 The applicant also submits that whatever test is adopted cannot be such as to place limits upon the exercise of the discretion that are not required by, or apparent from, the Act. 33 It claims that setting the threshold too high will defeat the intention of the legislature to allow the discretion in the first place The applicant does not suggest that cross-examination should be readily available at the request of a party to a proceeding. 35 Instead the applicant submits that in certain circumstances it is appropriate to test evidence through cross-examination, including where a party s evidence contains contradictory and/or unsubstantiated statements, where a party wishes to draw an adverse inference from the other party s evidence, 36 where there is conflicting evidence, and where a party wishes to impugne the credibility of a deponent. 37 Approach the opponent submits should apply 32. The opponent endorsed the approach taken by the Office as set out above. 38 Even if a lower threshold for requiring cross-examination is established, the opponent submitted that cross-examination still should not be permitted as the applicant has not elaborated on any supposed contradictions in the evidence that are of significance in this proceeding 32 Applicant s written submissions dated 23 June 2014, paragraph Applicant s written submissions, paragraph Ibid. 35 Written submissions, paragraph Letter from Henry Hughes to the Office dated 6 December 2013, paragraph Applicant s oral submissions at the hearing. 38 Letter from Kensington Swan to the Office dated 27 January 2014, paragraph 5. TM No

128 Page 12 of 40 and that Mr Moon could reasonably be expected to provide evidence about The opponent further submitted that the applicant had not established that cross-examination of Mr Moon is necessary and that its application should therefore be denied. 40 Legal principles relating to cross-examination in trade mark proceedings 34. It is rare for cross-examination to occur in trade marks proceedings before the Commissioner. 41 This appears, in part, to be because applications for cross-examination are rarely made. 42 Of the few cases directly on point, the below authorities provide some guidance as to the exercise of the Commissioner s discretion. Authorities determining whether cross-examination should be permitted in trade mark proceedings 35. The opponent cites the Assistant Commissioner s decision in DB Breweries Ltd v Society of Beer Advocats [2011] NZIPOTM 19 as an example supporting the Office s interpretation of section 160(2)(b) of the Act. This case involved an application for a declaration of invalidity and an application for revocation on grounds other than non-use. The applicant sought to cross-examine two of the owner s witnesses (one being a marketing expert and the other being the owner s marketing manager for the brand in question). 39 Ibid, paragraph Letter from Kensington Swan to the Office dated 7 November 2013, paragraph 13. This is consistent with the observation of the Assistant Commissioner in DB Breweries (supra) that compelling a witness to attend a hearing for the purpose of cross-examination would require an application to satisfy the Commissioner that it is necessary at [25.1]. 41 Chia Khim LeeFood Industries Pte Ltd v Kapsons Food Company Limited [2003] NZIPOTM 45; Ocean Spray Cranberries Inc v Sunraysia Limited [2001] NZIPOTM 39; and NZ Optical (supra). In Aqua Technics Pool and Spa Centre Ltd v Aqua-Tech Ltd (2007) 18 PRNZ 547 the Supreme Court noted that the proposed new evidence in that case, if received, would establish that crossexamination before the Assistant Commissioner is possible but quite rare: at [5]. The applicant accepts that cross-examination is not a standard occurence in trade mark proceedings before the Commissioner (written submissions, paragraph 11). 42 Although in DB Breweries (supra) the Assistant Commissioner had a different take on the low number of hearings in which oral evidence and/or cross-examination has been allowed, stating that [t]his suggests that in most cases matters of credibility etc can be resolved on the papers or through submissions at the hearing at [25.4]. TM No

129 Page 13 of In correspondence with the parties the Office set out the same test for the exercise of the Commissioner s discretion as laid out above. 43 However, unlike the present case, where the applicant opposes the threshold set by the Office, the parties in the DB Breweries case do not appear to have disputed the appropriateness of the Office s approach. 37. The applicant submitted that cross-examination was justified in relation to the owner s marketing expert due to a contradiction between the written evidence submitted by the parties concerning market research methodology, which could not be resolved other than by crossexamination. 44 The applicant also submitted there were major contradictions between the written evidence of the parties that could not be resolved other than by cross-examination of the owner s marketing manager, and that these contradictions went to the heart of the principal issue in the proceedings. 45 The applicant went on to set out the major contradictions. 46 The first of these related to an allegation of bad faith. The applicant further submitted that the owner s marketing manager was the only witness of the owner who could properly answer questions in relation to the relevant contradictions The Assistant Commissioner permitted cross-examination of both witnesses. In doing so, she made the following observations: It is likely that the Commissioner will only rarely permit witnesses to be compelled to attend a hearing for the purpose of cross-examination and this step would require an application to satisfy the Commissioner that it was necessary In every proceeding the Assistant Commissioner has the task of assessing evidence to assign its probity and weight in relation to the substantive matter. Points of disagreement by expert witnesses remain open to challenge by the submissions of the parties at the substantive hearing Cross-examination should only be allowed where the Commissioner is satisfied that there is a concern as to the credibility of a witness or the veracity 43 Paragraph [28.2] above. 44 DB Breweries (supra) at [23.1]. 45 DB Breweries (supra) at [24.1]. 46 DB Breweries (supra) at [24.2]. 47 DB Breweries (supra) at [24.3]. 48 Supra at [25]. TM No

130 Page 14 of 40 of written evidence, or where there is a contradiction between written submissions which cannot be resolved other than by cross-examination Historically there have been few, if any, hearings where oral evidence and/or cross-examination of witnesses have been allowed. This suggests that in most cases matters of credibility etc. can be resolved on the papers or through submissions at the hearing. 39. Another relevant decision of this tribunal is NZ Optical (Wholesale) Limited v Hannaford and Burton Limited [1980] NZIPOTM 5. That case involved an opposition in which the applicant requested cross-examination of six of the opponent s witnesses under section 68(1) of the Trade Marks Act Section 68(1) is the equivalent of section 160(2) under the current Act and, in essence, has the same effect The Commissioner found that cross-examination of any of the witnesses would not assist him in reaching a just decision and accordingly the request for cross-examination was refused. In coming to that conclusion the Commissioner made the following comments: 40.1 It is clear that neither party has a right to demand that witnesses who have given their evidence in writing be made available for cross-examination Cross-examination in hearings before the Commissioner is not to be encouraged lightly and should not be allowed unless good and sufficient reasons are given to enable the Commissioner to decide if it is right to do so The question to be decided in applications for cross-examination is whether or not the Commissioner will be assisted in arriving at a substantive decision if he or she allows cross-examination. Commissioner Dalefield cited Beecham Group Ltd v Bristol-Myers 49 The particular wording in section 68(1) is Subject to regulations under this Act, in any proceeding under this Act before the Commissioner the evidence shall be given by affidavit or statutory declaration in the absence of directions to the contrary; but in any case in which the Commissioner thinks it right so to do he may allow any deponent or declarant to be crossexamined on his affidavit or declaration. I do not consider anything turns on the removal of the words in which the Commissioner thinks it right so to do from section 160(2) of the current Act as it is implicit that the Commissioner will only exercise her discretion to allow crossexamination when she thinks it right to do so. 50 Citing Beecham Group Ltd v Bristol-Myers Company (No. 2) [1979] 2 NZLR 629 at 639. TM No

131 Page 15 of 40 Company (No. 2) [1979] 2 NZLR 629 in which the Chief Justice at that time stated: In my view the correct approach of the Assistant Commissioner should be first to decide whether in arriving at his decision he would be materially assisted by having the two deponents cross-examined, bearing in mind that the purpose of such cross-examination is to assist him and that the parties are not entitled to cross-examine as of right and also bearing in mind the nature of the application before him The Commissioner drew a distinction between a conflict of fact, which needs to be resolved by cross-examination and the sort of conflict, which is always before the tribunal in opposition cases, namely one involving differences in personal experience and opinion. 41. At the interlocutory hearing in the present proceeding, the applicant drew my attention to a reasonably recent appeal to the Appointed Person in the United Kingdom (Hokochemie GmbH v Hokko Chemical Industry Co., Ltd, UK Trade Mark Decision, O , 9 June 2008, Geoffrey Hobbs QC) in which cross-examination was allowed in the context of a revocation application. In that case the applicant appealed the Hearing Officer s decision to refuse its request for cross-examination under Rule 55 of the Trade Marks Rules In Hokochemie the advantages and disadvantages of allowing crossexamination are discussed. 53 The Appointed Person stated that the 51 At 639. The Beecham Group case (supra) addressed whether cross-examination should be allowed under section 96(1) of the Patents Act 1953, which is similar in effect to the equivalent under the former Trade Marks Act 1953 (section 68(1)). It was accepted by the parties in NZ Optical (supra) that the same principles apply in determining whether cross-examination should be allowed under both the Patents Act 1953 and the Trade Marks Act Rule 55 of those Trade Marks Rules is the comparable United Kingdom provision to section 160 of the New Zealand Act. Rule 55(2) provides that the Registrar has a discretion to to take oral evidence in addition to or in lieu of written evidence and she shall, unless she otherwise directs, allow any witness to be cross-examined on his statutory declaration, affidavit or oral evidence. In Hokochemie the Appointed Person emphasised that under Rule 55(2) the question is not whether cross-examination should be allowed (which I consider to be the question under the New Zealand Act) but whether it should be refused. 52 In the United Kingdom cross-examination will therefore be allowed unless the Commissioner has some reason to otherwise direct, and the position in the United Kingdom is therefore more favourable to an applicant for cross-examination than it is in New Zealand. Having said that, ultimately, both provisions allow the decision maker to direct whether cross-examination will be allowed and I consider that the United Kingdom authorities are still relevant. 53 Supra at [22] and [23]. TM No

132 Page 16 of 40 advantage of allowing cross-examination is that the Registrar will be able to determine the central issue (in that case the evidence in issue related to use) on the basis of evidence that has been tested by questioning directed to its reliability. 54 He warned against the impracticality of having to decide heavily contested issues of fact on matters of central importance to the case on the basis of conflicting written evidence alone and considered this would be an obstacle to the attainment of a just and fair outcome to the proceedings The Appointed Person in Hokochemie described the disadvantage of allowing cross-examination as being that considerable time, effort and money would be expended (although in that case the witness was in Japan and a videolink was envisaged). The Appointed Person went on to say that he could easily regard that as a reason for refusing cross-examination on matters of peripheral relevance but that in the present case it should only be regarded as a reason for giving special directions on costs In Alliance & Leicester plc s Application, 57 Ferris J considered that the words of Evershed MR in Kidax [1959] RPC 167 provide the best guide (in the United Kingdom) to the circumstances in which cross-examination should be allowed: 58 It is only consistent with the general principles upon which we administer justice here that if a party desires to test the evidence which appears by affidavit or statutory declaration, then prima facie and within reason he should be allowed to do so. 45. Evershed MR described the purpose of the qualification within reason as being to avoid what would be gravely oppressive In Kidax the Court of Appeal overturned the decision of Lloyd-Jacob J refusing cross-examination. Evershed MR noted that the substantive 54 Supra at [23(3)]. 55 Supra at [23(6)]. 56 Supra at [23(4)]. 57 [2002] RPC At Ibid. TM No

133 Page 17 of 40 question in the trade mark opposition was whether there would be a likelihood of confusion. His Lordship went on to say: 60 To that question, it seems to me, the answer may very well only be given with any degree of certainty if the court has the advantage of hearing witnesses stating the reasons they give for putting forward one view or the other. 47. On the issue of costs Evershed MR stated that if it turns out that the cross-examination is really to some extent a waste of time, then the Applicants can to some extent be compensated in the way of costs. 61 This is consistent with the applicant s submissions in the present case. 48. A final relevant United Kingdom authority is Permo [1985] RPC 597, in which cross-examination in the Trade Marks Registry was allowed. 62 The basis for this decision was that the questions raised by the written evidence in issue were quite fundamental to the substantive issue of whether use was established, and cross-examination would be positively helpful to the tribunal in coming to a just decision. 63 Judicial comment on absence of cross-examination 49. There are a number of reasonably recent cases, which discuss the consequences of cross-examination not being permitted in trade mark proceedings. The most frequently cited is the Court of Appeal decision in Aqua Technics Pool and Spa Centre Ltd v Aqua-Tech Ltd [2007] NZCA 90, which was referred to by both parties in this proceeding. 50. In Aqua Technics the respondent had opposed registration of the appellant s trade mark. The issue on appeal was whether Venning J was wrong to decide that the respondent had established use of the opposed trade mark in relation to spa and swimming pools. 51. The appellant was critical of a number of aspects of the evidence for the respondent, particularly that of Mr Ogden (a director of the respondent) in 60 At At This decision was made under section 55 of the Trade Marks Act 1938 which empowered a tribunal to take viva voce evidence, and which is sufficiently similar to section 160 of the New Zealand Act for this case to be relevant. 63 Permo (supra) at 599. TM No

134 Page 18 of 40 relation to use of the mark in question. On behalf of the Court, Ellen France J stated: 64 We have dealt with the particular issues raised by the appellant which are said to impact on the reliability of Mr Ogden s evidence. We add that if the appellant wanted to challenge Mr Ogden s evidence, the appeallant should have asked that he present himself for cross-examination. It is unfair to challenge the veracity of a witness when the challenge has not been put to him, as it could have been. The evidence is, on its face, sufficient to establish proprietorship. 52. This statement by the Court of Appeal has been cited reasonably frequently in decisions of this tribunal. In Nalli Kuppuswami Chetty and Nalli Kuppuswami Ramanathan trading in partnership as Nalli Chinnasami Chetty v Shri Nallis Sambbasivam [2013] NZIPOTM 29 the Assistant Commissioner, citing the above passage from Aqua Technics, stated that she could not accept the applicant s submissions concerning the credibility of statements in the opponent s evidence. 65 The opponent s declarations stood, subject to weight and any inadmissibility issues. 66 In other recent decisions the Assistant Commissioner has noted that the veracity of certain evidence has not been challenged through cross-examination and therefore the evidence stands The appellant in the Aqua Technics case applied for leave to appeal to the Supreme Court. In its decision dismissing the leave application, the Supreme Court stated: 68 The application seeks to make something of what appears to be a passing comment in the Court of Appeal judgment where, saying that evidence for the respondent was on its face sufficient to establish proprietroship and that issues said to impact on the reliability of the evidence of its witness had been dealt with, the Court added that if the appellant wanted to challenge the evidence it should have asked that the witness present himself for cross-examination. That is said to have been a wrong approach because it is not customary to have cross-examination before the Assistant Commissioner. (The proposed new evidence, if received, would establish that cross-examination is possible but quite rare.) The applicant says that the effect of the Court of Appeal s approach 64 Aqua Technics (CA), supra at [65]. 65 At [14]. 66 Ibid. 67 Robert Stevenson v YPG IP Limited [2012] NZIPOTM 21 at [52] and Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14 at [87]. 68 At [5]. TM No

135 Page 19 of 40 would be to allow applications to proceed on the basis of unsubstantiated decisions of fact in the absence of cross-examination. We do not consider the Court of Appeal was doing anything more than stating the obvious, namely that it may be difficult to contravert assertions of fact by a witness without crossexamining the witness. The crucial point is that the Court of Appeal did examine the criticisms. But it rejected them. There is nothing in this point. 54. In correspondence with the parties in this proceeding, the Office considered that the Aqua Technics cases do not have the effect of lowering the threshold for allowing cross-examination. 69 In particular, the Office pointed out that there seemed to be a mistaken view that the comments made by the Court of Appeal 70 suggest that cross-examination should be readily available at the request of parties in proceedings before this tribunal. 71 The Office noted that the Supreme Court 72 sought to clarify that what the Court of Appeal was really saying is that it had already dealt with the criticisms directed at the respondent s evidence The applicant submitted that a recent High Court decision also demonstrates the consequence of a request for cross-examination being refused. 74 In Zoggs International Limited v Sexwax Incorporated [2013] NZHC 1494 Simon France J accepted the appellant s submission that it was not open to the Assistant Commissioner to resolve the conflicting evidence of each party s key witness in the absence of crossexamination. 75 His Honour stated that: 76 There is no extrinsic material that settles the dispute, and such material as there is, favours Mr McConnochie [the appellant s lead witness] I do not consider it was open to the Commissioner to conclude on the papers that Mr Herzog s [the respondent s key witness] recollection was to be preferred. 56. The applicant in the present proceeding submitted that the Zoggs decision illustrates that the applicant s ability to request that the Commissioner 69 Letter from the Office to the parties dated 8 November At [65]. 71 Letter from the Office to the parties dated 8 November Indeed, at the interlocutory hearing in the present case the applicant submitted that in Aqua Technics the Court of Appeal regarded the parties as having a right to cross-examine. 72 In Aqua Technics. 73 Letter from the Office to the parties dated 8 November Written submissions, paragraph 75 At [24]-[25]. 76 Zoggs (supra) at [25]. TM No

136 Page 20 of 40 prefer its evidence over that of the opponent will be significantly undermined if cross-examination of Mr Moon is not permitted In my view this statement does not mean that every time there is conflicting written evidence cross-examination must be allowed. Rather, the particular written evidence in that case provided an insufficient factual basis for the decision maker to be able to prefer one version of events over the other, without cross-examination. 58. The absence of cross-examination was also considered in the United Kingdom decision of Dawaat Trade Mark [2003] RPC 187. In that case neither party applied to cross-examine the other s witness upon the evidence it wished the principal hearing officer to disregard. This was found to be a less than ideal way of proceeding in a case in which, amongst other things, the written evidence of the parties conflicted in various respects, and the documents selected for use as exhibits to the statutory declarations provided incomplete support for the witnesses assertions. 78 The Appointed Person observed that cross-examination could well have provided the principal hearing officer with the benefit of a better understanding of the reliability of the statements made in the statutory declarations. 79 Full and fair substantive hearing 59. At the interlocutory hearing counsel for the applicant submitted that if the Assistant Commissoner has to determine contested issues of fact on untested written evidence alone then that will not ensure a just and fair outcome to the proceedings. Support for this submission is found in Hokochemie as discussed above. 80 The importance of having all relevant 77 Written submissions, paragraph Supra at 194. This case also involved an allegation of bad faith. 79 Ibid. 80 In Hokochemie the Appointed Person noted that a major disadvantage of refusing crossexamination would be the impracticality of having to decide heavily contested issues of fact on matters of central importance to the case on the basis of conflicting written evidence alone. The Appointed Person considered this would be an obstacle to the attainment of a just and fair outcome to the proceedings (supra at [23(6)]). TM No

137 Page 21 of 40 evidence before this tribunal has been taken into account as a factor in reaching a decision to allow cross-examination The applicant in the present proceeding also emphasised the public interest in ensuring that the trade marks register accurately reflects the true position with regard to the ownership of trade mark rights. 82 The applicant submitted that this public interest dictates that the decision as to whether a trade mark will be registered ought to be a decision made on the best evidence available. 61. I accept there is a strong public interest in the substantive merits of the case being investigated fully and properly. 83 There is also authority to the effect that the public interest in having all relevant evidence before the decision-maker has greater weight in the context of trade mark proceedings, which themselves involve matters of public interest. For example, in the Court of Appeal decision in Pioneer Hi-Bred Corn Company Richardson J stated: 84...the object of s.16 is to protect the public interest. The proceedings are not simply for the benefit of the respective parties (George Thornhill & Co Ltd s Application [1963] RPC 13, 17). Within reasonable limits it furthers that public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion. Prejudice to the parties 62. At the interlocutory hearing counsel for the applicant submitted that if crossexamination is not allowed, the applicant would be prejudiced in its ability to 81 Merck & Co v Ancare New Zealand Ltd [1998] NZIPOPAT Written submissions, paragraph This public interest was noted in Anchor Foods Pty Limited v New Zealand Milk Brands Limited [2014] NZIPOTM 21 at [98]. While that observation was made in the context of an application to file evidence out of time, I consider it is equally relevant to the present case. 84 Pioneer Hi-Bred Corn Company v Hyline Chicks [1978] 2 NZLR 50 at 73 as cited in Anchor Foods at [101]. Pioneer Hi-Bred also involved the filing of further evidence on appeal but again I do not consider this detracts from the relevance of the comments regarding the public interest in a full and fair hearing. As noted in Anchor Foods (supra), the public interest element in trade mark proceedings has been accepted in many subsequent cases, including the recent decision of the Court of Appeal in Ice SA v Swatch AG [2013] NZCA 654 at [19] citing Indtex Trading Ltd v The Otago Rugby Football Union, High Court, Auckland, AP23-SW01, 1 June 2001, at [29] and [39], Daimler AG v Sany Group Co Ltd, High Court, Wellington, CIV , 22 April 2009 at [6] and VB Distributors v Matsushita Electric Industrial Ltd (1999) TCLR 249 at [81]-[82]. TM No

138 Page 22 of 40 present its case as it sees fit, which it says is one of the tenets that underpins justice in substantive proceedings. 63. The applicant also noted the following shortcomings of proceedings conducted on the basis of written and/or documentary evidence, and submitted that these shortcomings should form part of the list of considerations made by the Commissioner when exercising the discretion under section 160(2): Assessments of credibility are often difficult to make, even where contradictory evidence is available; 63.2 The nuances of language are lost when the evidence is in writing and furthermore the writer is unable to make an assessment as to how the written words have been understood; 63.3 A deponent can too easily omit details, whether intentionally or not, and thus convey a misleading or confusing message; 63.4 It is unfair to draw any adverse inference in submissions, from any aspect of the evidence filed, where the deponent has not been given fair opportunity to respond to that suggestion; 63.5 There is little or no opportunity for additional explanation or embellishment to assist with clarification or understanding of what has been presented. 64. The opponent says that it has been inconvenienced by being put to significant time and expense in having to respond to the meritless application for cross-examination. 86 In particular, the opponent submits that the request to cross-examine Mr Moon is an attempt to re-litigate the applicant s request for production of the signed co-existence agreement and should therefore be prohibited as a matter of law and natural justice. 87 The opponent has not provided any submissions or evidence on the costs 85 Written submissions, paragraphs Letter from Kensington Swan to the Office dated 7 November 2013, paragraph 23 and letter from Kensington Swan to the Office dated 27 January 2014, paragraph Letter from Kensington Swan to the Office dated 7 November 2013, paragraph 20. TM No

139 Page 23 of 40 directly associated with Mr Moon attending the substantive hearing for cross-examination. 65. Looking further afield to the prejudice to parties in general, where crossexamination is allowed, other than the time and cost associated with crossexamination, the only other concern I envisage is that lay litigants may be prejudiced in hearings where cross-examination occurs. This is because such litigants are unlikely to have the necessary skills to cross-examine or object to cross-examination effectively. Clearly this is not a concern in the present case given both parties have legal representatives. However, as counsel for the applicant observed, this decision is likely to have wider application. The applicant s counsel suggested that a friend of the court (amicus curiae) could be appointed if necessary to protect the lay litigant. In most cases, however, I consider the Assistant Commissioner should be well placed to ameliorate this concern by the way in which he or she oversees the cross-examination. Regardless, counsel for the applicant submitted that this sort of concern should not outweigh the pursuit of justice. Efficiency and economy of proceedings 66. The interests of efficiency and economy dictate that trade mark opposition proceedings are determined expeditiously The applicant accepts that hearings on the papers will no doubt be more expeditious than those in which cross-examination is permitted. 89 However, the applicant says that the additional time and facilities required to deal with viva voce evidence are the only discernible reasons for refusing cross-examination and both justice and public interest will dictate that these reasons are outweighed where any of the shortcomings listed above are raised I consider that in most cases the additional time required for crossexamination is unlikely to result in any significant delay in determining the proceeding, unless there are many witnesses or the witness(es) in question 88 Anchor Foods (supra) at [91]. 89 Written submissions, paragraph Written submissions, paragraph 15. TM No

140 Page 24 of 40 are unavailable for a considerable period of time (which occur infrequently given the ability for cross-examination to take place via video conference) As stated, the applicant submits that any additional costs associated with cross-examination can be dealt with by way of costs orders as part of the substantive decision. Floodgates 70. In NZ Optical Commissioner Dalefield noted that: 92 Mr Healy [counsel for the party opposing cross-examination] made the point that, if cross-examination is allowed for inadequate reasons, such decisions will be constantly cited back and cross-examination will become more routine in later proceedings thus increasing the time and expense involved. This is, of course, true but, while important, cannot override the need to allow crossexamination if it would assist me to reach a just decision. 71. I am conscious to avoid opening the floodgates to cross-examinaton in hearings before this tribunal to the extent that cross-examination may become commonplace in such hearings. This would be undesirable given it would be contrary to the interests of efficiency and economy. 72. The requirement in section 160(1) for evidence before this tribunal to be in written form is consistent with the desire for the tribunal to be a cost effective, efficient and informal forum. 93 The philosophy of the Office is to provide an affordable, low cost and accessible service which means that lay litigants must be able to use the system In the words of Commissioner Dalefield, cross-examination should not be encouraged lightly. 95 If cross-examination under section 160(2) becomes a frequent occurrence there is a real risk that this will erode the purpose of the requirement for evidence to be in written form (under section 160(1)). 91 See for example DB Breweries (supra at [27]). 92 Supra. 93 In Royal New Zealand Yacht Squadron Young J refers to the desire of administrative tribunals to function informally (at [18] citing R v Deputy Industrial Injuries Commissioner, Ex parte Moore [1965] 1 All ER 81 at 94 per Diplock LJ (from line (e))). 94 Sumpter, Trade Marks in Practice (2 nd edition, LexisNexis NZ Limited, Wellington, 2011) at NZ Optical (supra). TM No

141 Page 25 of I consider the principles set out below for determining whether crossexamination should be permitted will go some way to addressing this floodgates concern. The key, it seems, is in the quote above from NZ Optical regarding cross-examination for inadequate reasons. If sufficiently good reason is provided for cross-examinaton, and the principles below are applied then the floodgates are unlikely to be flung wide open. Summary of principles for determining whether cross-examination should be allowed 75. In Alliance & Leicester plc s Application [2002] RPC 29, Ferris J stated I do not think that it is possible to give an exhaustive statement of the circumstances in which cross-examination should be allowed. 96 I agree with that observation. However, having reviewed relevant authorities, and having considered the approaches adopted by the Office and the parties to this proceeding, I consider it helpful to outline the following principles, which in my view are relevant to an exercise of the Commissioner s discretion to permit cross-examination under section 160(2)(b) of the Act: The overarching principle is whether allowing cross-examination will materially assist the Commissioner in reaching a substantive decision There is no right to cross-examine This observation was made by Ferris J in the context of the approach taken by the Registry under the United Kingdom Trade Marks Act This is not intended to be an exhaustive statement of the circumstances in which crossexamination should be allowed, but rather to provide guidance on the exercise of the discretion to permit cross-examination. 98 Ciba-Geigy AG v Douglas Pharmaceuticals Limited [1990] NZIPOPAT 7 citing Davison CJ in Beecham Group Limited v Bristol-Myers Co. (No. 2) [1979] 2 NZLR 629 at 639; NZ Optical (supra) and Cotura Fashions Limited v C & A Modes [1984] NZIPOTM 4. In the latter two trade mark cases rather than materially assist (emphasis added), the test was whether cross-examination would simply assist the Commissioner in reaching a just decision on the opposition. However, I prefer materially assist as I consider that phrase better represents the purpose of section 160 of the Act and the balance to be struck between the competing interests at play when determining whether cross-examination should be allowed). As stated above, in Permo (supra) the phrase used was similar: cross-examination would be positively helpful to the tribunal in coming to a just decision at NZ Optical (supra); Beecham (supra); Kidax (supra) at 177. TM No

142 Page 26 of The matters for cross-examination must be relevant to the issues in question in the substantive proceeding. 100 The greater relevance the matters for cross-examination have to the substantive issues, the more likely it is that cross-examination will be permitted. Where the matters for cross-examination are unimportant, cross-examination is likely to be refused In most cases, cross-examination will only be warranted where: there is a genuine concern as to the credibility of a witness or the veracity of written evidence, which can only be resolved by cross-examination; 102 or there is a contradiction between the written evidence submitted, which can only be resolved by crossexamination; 103 or the evidence in question is solely within the knowledge of the declarant (remembering that the evidence in issue must be relevant to the substantive matter) Hokochemie (supra at [23]) where the Appointed Person drew a distinction between matters of central importance to the case and matters of peripheral relevance; Permo (supra) where the evidence in issue went to the principal matter at issue for the main hearing at 599. In the context of cross-examination in trials generally [t]he Court will not permit cross-examination on matters not connected with the question in the proceedings : Re SBA Properties Ltd [1967] 2 All ER 615 and Comet Productions v Hawkex Plastics [1971] 2 QB 67 (CA) at 75, 77 as cited in McGechan on Procedure under the heading No cross-examination on irrelevant matters in the context of High Court Rule Kerly s Law of Trade Marks and Trade Names (14 th edition) at The applicant appears to accept (albeit impliedly) that cross-examination should be restricted to relevant matters given it submits that it is entitled to cross-examine Mr Moon on all relevant matters : Letter from Henry Hughes to the Office dated 6 December 2013, paragraph DB Breweries (supra) at [25.3]; and Dawaat (supra) at [26]. See also the above discussion of Aqua Technics (supra) and Zoggs (supra). In Kidax (supra) the main ground for the (eventually) successful application to cross-examine was that the declarations were not reliable and had been obtained in an improper manner. Evershed MR stated that I cannot think it necessary for someone seeking leave to cross-examine to show that on the material already available the veracity of the witnesses is in doubt. But I do think, with all respect, that what has emerged shows that there is justification for the view, though later events may altogether displace it, that the way in which these declarations have been prepared may seriously qualify the value of the apparent testimony at DB Breweries (supra) at [25.3]; NZ Optical (supra); Dawaat (supra) at [25]; and in the context of a patent proceeding where there was conflicting expert evidence: Merck (supra). This principle is also consistent with the statement of Simon France J in Zoggs (as quoted above). The authors of Kerly s Law of Trade Marks and Trade Names (14 th edition) state that [i]t is not necessary to show a direct conflict of evidence on a particular point (at 5-107). However, this is in the context of the lower threshold under the equivalent UK provision (as discussed above). TM No

143 Page 27 of The advantages of cross-examination discussed above (including a full and fair hearing) must be weighed against the disadvantages outlined above (delay, cost, and inconvenience to the witness). 105 If the likely benefits of cross-examination are disproportionate to the cost, hearing time, and availability of the witness, crossexamination is likely to be refused. 106 The decision on crossexamination should also take into account the extent to which costs orders can appropriately ameliorate the disadvantages of cross-examination in the case at hand, particularly if crossexamination turns out to be a waste of time The earlier the possibility of cross-examination is raised, the more likely it is to be allowed. 108 Application for cross-examination of Mr Moon in this proceeding Aspects of evidence for which cross-examination is sought 76. The applicant s initial request for cross-examination simply stated that the applicant wants to challenge the credibility of several statements made in Mr Moon s evidence. 109 The particular statements in issue were not specified. 77. The Office then asked the applicant to outline in sufficient detail why it considered cross-examination to be necessary so the opponent could address that request. 110 The applicant responded by referring, in general terms, to the statements in issue In trade mark cases under the previous 1953 Trade Marks Act (which, in all material respects, contained essentially the same provision as the current Act) cross-examination had been ordered where the evidence of a fact rested in the mind of the person asserting its existence: Chia Khim Lee Food Industries Pte Ltd v Kapsons Food Company Limited [2003] NZIPOTM 45 citing Cotura Fashions (supra). 105 Hokochemie (supra) at [22]. 106 Kerly s Law of Trade Marks and Trade Names (14 th edition) at Kidax (supra) at A number of cases refer to the length of time between the application for cross-examination and the hearing, for example in Merck (supra) one of the factors Assistant Commissioner Popplewell took into account in allowing cross-examination in a patent hearing was the fact that the possibility of cross-examination had been raised some six weeks before the hearing. 109 Letter from Henry Hughes to the Office dated 20 September 2013, paragraph Letter from the Office to the parties dated 9 October Letter from Henry Hughes to the Office dated 23 October 2013, paragraphs 7-8 and TM No

144 Page 28 of The opponent considered that the applicant had not provided sufficiently detailed reasons for cross-examination and asserted that the applicant must establish the necessity of cross-examination by referring specifically to the evidence or documents giving rise to the claims of contradictions or credibility. 112 The Office essentially agreed and asked the applicant to provide further information as to why it considers cross-examination necessary. 113 The Office said that only once it had this information would it be in a position to assss whether cross-examination was actually necessary The applicant then set out the following reasons for cross-examining Mr Moon (which it said could not be resolved by filing further evidence as the matters relate to evidence solely within the knowledge, possession and/or control of Mr Moon): The applicant may ask the Commissioner to draw an adverse inference from the response of the opponent to the Commissioner s request for production of further documents, including the process followed by Mr Moon in his attempt to locate the signed strategic alliance agreement between the parties, and in particular further details regarding Mr Moon s conversation with Mr Muriwai (the former chief executive of the opponent) and the responses Mr Moon received from his to the opponent s staff regarding the strategic alliance agreement Letter from Kensington Swan to the Office dated 7 November 2013 referring to Graeme Taylor in Judicial Review: A New Zealand Perspective (LexisNexis NZ Ltd, Wellington, 2010) at [10.37] in which he says, in the context of judicial review proceedings, An application for cross-examination should state the factual areas for cross-examination relating them to the grounds for challenging the decision and matching them to passages in particular affidavits and documentary material contended to give rise to gaps and deficiencies which should be subject to cross-examination. The opponent submitted that the approach taken to cross-examination in judicial review proceedings should apply by analogy. 113 Letter dated 8 November Ibid. 115 Letter from Henry Hughes to the Office dated 6 December These reasons for crossexamination are also referred to in the applicant s written submissions as being the aspects of Mr Moon s evidence on which the applicant seeks to cross-examine him (paragraph 2). 116 Letter from Henry Hughes to the Office dated 6 December 2013, paragraph 11(a). The applicant specifically referred to the third Moon declaration, paragraphs 5(a) and (d). TM No

145 Page 29 of Mr Moon makes a number of factual assertions, which are unsubstantiated by any documentary or other supporting material Mr Moon makes a number of factual assertions which contradict the applicant s evidence Mr Moon makes statements regarding matters, which are, or appear on the face of his evidence to be, outside the scope of his experience or expertise The applicant asserted that if it were forced to disclose all relevant aspects of Mr Moon s evidence for cross-examination, this would significantly undermine its ability to cross-examine robustly as Mr Moon and/or his counsel would have the opportunity to prepare and rehearse. 120 In the applicant s words, forewarned is forearmed and if each and every aspect of evidence for cross-examination is detailed the principles of crossexamination will be undermined I consider, however, that the applicant s concern in this regard is overstated. The authorities support my view, and the need for the identification of the areas of evidence in respect of which crossexamination is sought Letter from Henry Hughes to the Office dated 6 December, paragraph 11(b). 118 Ibid, paragraph 11(c). 119 Letter from Henry Hughes to the Office dated 6 December 2013, paragraph 11(d). 120 Letter from Henry Hughes to the Office dated 6 December 2013, paragraph 14 and written submissions, paragraph This submission was also advanced at the interlocutory hearing where I noted that in the DB Breweries (supra) case, the party seeking to cross-examine specified the major contradictions between the written evidence of the parties (at [24.2]). Counsel for the applicant submitted that in that case the level of detail given for the areas of cross-examination was greater than ought to be given and that the circumstances of that case were different to the present proceeding because there was no challenge to credibility of witnesses (but rather only conflicts of evidence). 121 Written submissions, paragraph NZ Optical (supra); Auckland City Council v Auckland City Electric Board (High Court, Auckland, CP26/93, 10 June 1993, Williams J) in which Williams J, in the context of cross-examination of the maker of an affidavit under High Court Rule 7.28, suggested that a party seeking crossexamination should file particulars of what it sought to cross-examine on. An applicant needs to provide the Court with a proper basis for the application: McGechan on Procedure at HR High Court Rule 7.28 relates to affidavits in interlocutory applications whereas the request for cross-examination in the present proceeding is in the context of a substantive hearing. The test for permitting cross-examination is different under Rule 7.28 (ie it requires special circumstances ) but I consider the comments regarding particularisation of the areas for cross-examination apply TM No

146 Page 30 of In NZ Optical counsel for the party seeking cross-examination made essentially the same submission as counsel for the applicant in this case if the person seeking to cross-examine outlines in the greatest detail the manner in which he proposes to conduct his cross-examination, showing its purpose and the likely questions then the cross-examination will be fruitless. 123 The Commissioner was unconvinced and thought the burden should not be placed upon the decision maker to interpret the brief reason given for cross-examination: I think that both I and the opponent are entitled to know the specific parts of the evidence given upon which it is desired to cross-examine. At present, without any indication of those parts of the evidence about which the applicant wishes to cross-examine the declarants, I am not disposed to allow crossexamination An applicant for cross-examination therefore runs a risk if it does not sufficiently set out the areas or reasons for cross-examination. It will be difficult to prove the relevance of the cross-examination, and that the decision maker will be assisted by such cross-examination, if the areas of evidence for cross-examination are not at least outlined. The greater the level of specificity, the greater the likelihood that cross-examination will be permitted. 84. I consider the Office was correct to require the applicant to set out the areas for cross-examination. These do not need to be detailed (categories will probably suffice in most cases) and the applicant certainly does not need to provide the questions for cross-examination. I consider it will be possible in most cases for the applicant to strike an effective balance between the level of detail provided (so as to give sufficient reasons supporting the application for cross-examination) as against the concern that to do so would allow the declarant to prepare and rehearse his or her viva voce evidence. equally to the present case. In Hokochemie (supra) and DB Breweries (supra) the areas for crossexamination were listed. 123 NZ Optical (supra). 124 Ibid. TM No

147 Page 31 of Turning now to each of the four reasons for cross-examination of Mr Moon. 125 Reason 1: production of signed strategic alliance agreement 86. The Office considered this matter had already been traversed and dealt with in the context of the applicant s request for production of further documents. 126 Likewise, the opponent asserted that the request to crossexamine Mr Moon is an attempt to re-litigate this issue and should therefore be prohibited The applicant submits that the strategic alliance agreement, and the steps Mr Moon took to locate a signed copy of that document are relevant to the issues in the substantive proceeding for the following reasons: 87.1 The existence and context of a co-existence agreement (including whether it was signed) will have a major bearing on the outcome in a trade mark opposition proceeding. 128 The applicant submits that evidence concerning the co-existence of the two organisations in the New Zealand marketplace is evidence concerning the relevant circumstances in trade. The applicant asserts that it is settled that the circumstances in trade are relevant to the matters at issue in an opposition, including the likelihood that deception or confusion will result from use of the opposed mark The unsigned agreement 130 does not contain any provision or indication that the opponent was concerned about confusion or deception in the New Zealand marketplace These reasons double as the aspects of Mr Moon s evidence upon which the applicant seeks to cross-examine him on. 126 Letter from the Office to the parties dated 18 February The Office noted that Mr Moon had provided a statutory declaration clearly setting out all the steps he took to try and locate the requested document (a signed copy of the strategic alliance agreement) which, notably, neither party can locate despite both parties seemingly having signed it. 127 Letter from Kensington Swan to the Office dated 7 November 2013, paragraph Oral submissions at the hearing and written submissions, paragraph Letter from Henry Hughes to the Office dated 23 October 2013, paragraphs Annexed to Heasman 1 as exhibit MH Letter from Henry Hughes to the Office dated 23 October 2013, paragraph 15. TM No

148 Page 32 of One of the steps Mr Moon says he took in searching for the signed agreement was to ask the opponent s Information Technology department to search its online records for any files with the title CIMA. 132 One of the issues in dispute is whether the opposed mark (THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS) has been used separately to the acronym CIMA. Mr Moon states that it is his understanding that any cobranded publications released in New Zealand by both the opponent and the applicant have included the CIMA logo or word CIMA together with the opposed mark, rather than the opposed mark being used in isolation. 133 The applicant submits that the Commissioner needs to know why Mr Moon only asked for the acronym (CIMA) to be searched (for instance, the applicant questions whether it was because he was at pains to only locate records of the opposed mark being used in conjunction with the CIMA acronym). The applicant says that if it cannot ask Mr Moon why the search term used was CIMA then it will be impossible to tell whether the search was adequate but furthermore it will not be known whether Mr Moon can substantiate his statement that the opposed mark is only ever used in conjunction with the acronym Mr Moon does not say whether, as a result of the steps he took to locate the signed co-existence agreement, he discovered anything leading him to believe that the agreement had been signed. At the interlocutory hearing before me the applicant was clear that it is not asking for hearsay evidence, for example, on whether the opponent s chief executive told Mr Moon the agreement had been signed or not. Rather, the applicant asserts that Mr Moon himself, in his position as General Counsel, will have an understanding as to whether the agreement was signed, and that Mr Moon has been suspiciously quiet on that point. Given Mr Moon is the opponent s General Counsel, the applicant says it would expect him to be 132 Moon 3, paragraph 5(c). 133 Moon 2, paragraph 11. Presumably Mr Moon points this out in an attempt to show that the opponent has only been aware of, and accepted, use of the opposed mark where it has been used in conjunction with an acronym (CIMA), which distinguishes the opposed mark from the opponent s marks. TM No

149 Page 33 of 40 aware of whether his organisation was party to such an agreement The applicant submits that, given the central importance of the strategic alliance agreement, it is entitled to question whether the steps taken by Mr Moon to locate a signed copy of the agreement were adequate or whether the steps were minimal because Mr Moon knew it was not in the interests of his employer to locate a signed copy of the agreement. 134 Moreover, the applicant says it is required to question Mr Moon on the steps he took before it can ask the Commissioner to draw any inferences as to the reason why the agreement was not produced and/or inferences as to any of its terms I accept that the strategic alliance agreement, and Mr Moon s evidence relating to that agreement, has some relevance to the substantive issues in this proceeding. In addition to the relevance claimed by the applicant, it seems to me that Mr Moon s awareness of whether there was a strategic alliance also goes towards the issue of deception and confusion in another respect. If Mr Moon, as the opponent s General Counsel, was not aware of a formal alliance between the parties by virtue of the agreement in issue, 136 then it seems unlikely that the relevant market would be aware of such an alliance. If the relevant market was not aware of a strategic alliance between the parties then it seems to me that a submission could be made that confusion would be more likely. Put another way, if the market was aware the parties were in an alliance, then those in the market would presumably be more likely to appreciate that two different and separate entities exist. Reason 2: unsubstantiated factual assertions 134 Oral submissions and written submissions, paragraph 20.1 and At the hearing the applicant s counsel detailed its concerns about the specific steps taken by Mr Moon to locate a signed copy of the strategic alliance agreement. For example, Mr Moon says he ed all current employees to see if anyone knew of the location of the signed agreement but that while he received some responses to his request no one knew where the signed agreement was located (Moon 3, paragraph 5(a)). The applicant s counsel observed that the content of those responses is not given and they could, for example, have said I recall the agreement was signed but I do not know where the signed agreement is. That is, the applicant is more interested in what Mr Moon does not say here, and what it submits he ought to have said to give a more complete picture. 135 Written submissions, paragraph See Moon 2, paragraph 9. TM No

150 Page 34 of The only example given by the applicant of an unsubstantiated factual assertion is Mr Moon s statement that members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants The Office considered that, in terms of testing the credibility of the witness on this statement, there seemed to be no reason why this could not be challenged through submissions and evidence to the contrary. 138 Further, the Office stated that this matter alone did not seem so central to the case, or of sufficient gravity, to require cross-examination Likewise, the opponent submitted that the applicant was entitled to make submissions on the weight to be given to this statement and there was no genuine concern as to the credibility of Mr Moon or the veracity of his written evidence. 140 On this basis, the opponent considered there was no need to cross-examine Mr Moon. 92. At the hearing the applicant submitted that if a declarant makes assertions, particularly as to the state of the market (as its says Mr Moon has), the opposing party must be entitled to challenge that, and test the veracity of that statement. The applicant disagrees with the Office s suggestion that if it wishes to challenge Mr Moon s statement it could produce evidence to the contrary, primarily because it says this would require the applicant to prove a negative. It is difficult to see how the applicant could provide competing evidence in respect of this assertion. In those circumstances the applicant says it is appropriate to cross-examine Mr Moon as to the basis for making the assertion. 93. The applicant also argued that the Office s suggestion that Mr Moon s credibility could be challenged through submissions and contrary evidence is impractical. The applicant cited the Court of Appeal decision in Aqua Technics as an example of the need for cross-examination where credibility is an issue. 141 Similarly, the applicant submitted that unless the conclusion 137 Moon 1, paragraph Letter from the Office to the parties dated 18 February Ibid. 140 Letter from Kensington Swan to the Office dated 27 January 2014, paragraph Written submissions, paragraph TM No

151 Page 35 of 40 can be clearly drawn on the basis of uncontrovertable evidence, it is not open to a party to make such a submission without the relevant points having been put to the witness in cross-examination The particular relevance of the above assertion by Mr Moon was not detailed by the applicant, although in general terms the applicant submitted that Mr Moon s statement goes to the heart of the matter. 95. I consider that the way in which the opponent s marks are referred to, or used, in the relevant market is relevant to the extent to which, if at all, that market will be confused by registration of the opposed mark under section 17(1)(a) of the Act. 96. The applicant declined to specify any of the other examples of unsubstantiated factual assertions, which it says exist. The reason the applicant gave for declining to do so was its forewarned is forearmed submission (discussed above). 143 It seems to me, however, that another statement from Mr Moon which is largely unsubstantiated, 144 is his statement that he understands that any co-branded publications released in New Zealand by both the applicant and the opponent included the word CIMA together with the opposed mark, rather than the opposed mark being used in isolation. 145 I consider that this statement is relevant to the central issue of confusion in the market. Reason 3: contradictions in factual assertions 97. The applicant gives only one example in support of this reason. The applicant s Head of Corporate Affairs (Ms Heasman) says that the opponent has been aware of, and consented to, use of the opposed mark in New Zealand since at least In contrast, Mr Moon states that the 142 Ibid. 143 Written submissions, paragraph Other than Mr Moon s reference to one of the applicant s exhibits (Heasman 1, MH-6) at Moon 2, paragraph Moon 2, paragraph Heasman 1, paragraph 17. TM No

152 Page 36 of 40 opponent has not, and does not, consent to the use or registration in New Zealand of the opposed mark in isolation The Office accepted the opponent s position that the applicant could have filed further evidence to support Ms Heasman s assertion and still has the opportunity to present submissions on this point at the substantive hearing The applicant submits that, in the absence of contemporaneous documents or similar, the only way to challenge the opponent s denial of Ms Heasman s statement is through cross-examination. 149 The applicant notes it does not have the opportunity under the Regulations to file evidence in reply, or to file further evidence that has the sole purpose of bolstering evidence already filed. 150 Even if it did, the applicant submits that the Commissioner would be left in the position of having to reconcile conflicting written evidence without any means of determining the credibility or otherwise of the respective deponents I accept that there does not appear to be any extrinsic material settling the dispute on this point 152 and that this would usually point towards crossexamination being allowed However, my concern with regard to this reason for cross-examination is the extent to which consent to use the opposed mark 153 is relevant to the substantive issues in dispute in this proceeding. It is unclear whether the applicant considers that consent is relevant to the likelihood of deception or confusion on the basis that the opponent would not have consented to use of the opposed mark if it considered that such use was likely to confuse or deceive the relevant market. There are no pleadings addressing the issue of consent directly. For instance, the applicant has not pleaded that there has been honest concurrent use under section 26(b) of the Act. If I direct that cross-examination of Mr Moon is permitted (on the basis of the 147 Moon 2, paragraph Letter from the Office to the parties dated 18 February Written submissions, paragraph Written submissions, paragraph Written submissions, paragraph In the words of Simon France J in the Zoggs case (supra). 153 If consent is found to have been given. TM No

153 Page 37 of 40 applicant s other reasons) then I consider that cross-examination on this particular issue should only be allowed at the hearing if the applicant can show how the consent issue is relevant to the matters in question in the substantive proceeding Despite the applicant s claims that there are other contradictions in factual assertions, no others have been brought to my attention and nor are any obvious from my review of the evidence. Reason 4: factual assertions outside the scope of the witness expertise 103. The example the applicant gives for this reason for cross-examination is Mr Moon s statement that I consider that use of any combination of the words Chartered, Institute, and Accountants in New Zealand is likely to confuse the public into thinking that the entity or individual using such words is a member of the Institute or otherwise associated with the Institute (paragraph 8.6 Moon 1) The opponent submitted that the weight to be given to such statements can be assessed without the need for cross-examination, and that to the extent the applicant considers Mr Moon is unqualified to make particular statements, the applicant is entitled to make such legal submissions. 155 The Office agreed and also stated that it would have been a simple enough matter to challenge Mr Moon s statement through conflicting evidence The applicant submits that it is not possible to make any assessment as to weight without drawing an inference as to whether Mr Moon is qualified to make the statement or not. Further, the applicant asserts that the Commissioner cannot determine the basis upon which Mr Moon may or may not be qualified to make the statement unless he is cross-examined as to the basis upon which he made it Mr Moon s statement regarding the likelihood of confusion is opinion evidence. Unless the opponent has established that Mr Moon is an expert, 154 Letter from Henry Hughes to the Office dated 6 December 2013, paragraph 11(d). 155 Letter from Kensington Swan to the Office dated 27 January 2014, paragraph Letter from the Office to the parties dated 18 February Written submissions, paragraph TM No

154 Page 38 of 40 this evidence is inadmissible. 158 The appropriate place to establish whether Mr Moon is an expert is in his written evidence. Furthermore, there is technically no expert evidence if the statutory declaration does not contain the requisite statement for expert witnesses set out in High Court Rule Mr Moon s evidence does not comply with High Court Rule In view of the above, I consider there is no need to cross-examine Mr Moon on this particular evidence (ie on paragraph 8.6, Moon 1). Advantages and disadvantages of allowing cross-examination of Mr Moon 108. Overall, and on balance, I consider that the decision maker will be materially assisted in reaching a just substantive decision if crossexamination of Mr Moon is permitted. In particular, I consider: The matters for cross-examination, described by the applicant as Reason 1 and Reason 2 (as set out above) are relevant to at least some of the important issues in the substantive proceeding Mr Moon s evidence regarding the steps he took to locate a signed copy of the strategic alliance agreement, and his understanding of whether such an agreement exists is evidence solely within his knowledge The applicant has shown (narrowly) that it has a genuine concern as to the credibility of Mr Moon, which cannot be resolved other than by cross-examination In view of the above, cross-examination of Mr Moon has the advantage of contributing to a full and fair hearing, which is in the public interest in this opposition proceeding. Cross-examination also has the advantage of avoiding prejudice to the applicant (for instance there is a real risk that the 158 Cotton On Clothing (New Zealand Limited) v Ruby Apparel (2008) Limited [2010] NZIPOTM 20 at [25]. 159 Cotton On Clothing (supra) at [26]. 160 I wish to make it clear, however, that I have not formed any view on Mr Moon s credibility and this interlocutory decision should not to be taken in any way as a comment on his good faith or credibility. TM No

155 Page 39 of 40 applicant will be hamstrung in the substantive submissions it can make if it does not challenge Mr Moon s credibility by cross-examination) Conversly, there is minimal prejudice to the opponent if cross-examination of Mr Moon is allowed. Mr Moon resides in Wellington 161 and the opponent s head office appears to be close to the likely hearing venue. 162 Therefore, the cost and inconvenience associated with cross-examination of Mr Moon is likely to be minimal. The applicant estimates that crossexamination of Mr Moon is likely to take less than an hour (including any reexamination if sought by the opponent) If it transpires at the substantive hearing that cross-examination has been meritless then I consider this should be able to be addressed by way of an appropriate costs order No hearing date has been set for the substantive hearing in this proceeding so there is plenty of time for Mr Moon to make himself available for crossexamination, and allowing cross-examination will not jeopardise any hearing date. The applicant is willing to accommodate Mr Moon s schedule. 165 Finding 113. Having applied the principles discussed above, including weighing the advantages of cross-examination of Mr Moon against the disadvantages, I find in favour of the applicant by a narrow margin. Directions 114. I direct that Mr Moon make himself available for cross-examination at the commencement of the substantive hearing of this proceeding. Costs 161 Moon 1, introductory paragraph. 162 Letter from Henry Hughes to the Office dated 23 October Oral submissions at the hearing. See also letter from Henry Hughes to the Office dated 6 December 2013, paragraph In that regard, I note the broad discretion the Commissioner has with regard to costs under section 166(1) of the Act. 165 Letter from Henry Hughes to the Office dated 6 December 2013, paragraph 20. TM No

156 Page 40 of The question of costs in relation to the request for cross-examination is reserved for determination at the conclusion of the substantive proceedings. 166 Dated this 3 day of September 2014 Natasha Alley Assistant Commissioner of Trade Marks 166 The same approach to costs was taken in Permo (supra, at 600) and Hokochemie (supra, at [24]). TM No

157 3 September 2014 HENRY HUGHES IP LIMITED PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Decision of Commissioner The Assistant Commissioner has determined the interlocutory matter regarding the right to crossexamine the opponent s witness. We attach the decision of the Assistant Commissioner. At the end of the appeal period, the Office will take further steps to set a hearing date for the substantive matter and to summons the witness for cross-examination. Please contact me if you have any questions. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs

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163 IN THE COURT OF APPEAL OF NEW ZEALAND CA257/05 [2007] NZCA 90 BETWEEN AND AQUA TECHNICS POOL AND SPA CENTRE NEW ZEALAND LIMITED Appellant AQUA-TECH LIMITED Respondent Hearing: 8 February 2007 Court: Counsel: Judgment: Chambers, Robertson and Ellen France JJ D L Marriott for Appellant K W McLeod for Respondent 22 March 2007 at 11 am JUDGMENT OF THE COURT A The appeal is dismissed. B The appellant is to pay to the respondent costs of $6,000 plus usual disbursements. REASONS OF THE COURT (Given by Ellen France J) AQUA TECHNICS POOL AND SPA CENTRE NEW ZEALAND LTD V AQUA-TECH LTD CA CA257/05 [22 March 2007]

164 Table of Contents Para No. Introduction [1] Factual background [3] Applicable principles [12] Judgment of the High Court [19] The appellant s case [28] Use as part of a company or trading name? [32] Use in relation to services or goods? [43] Spa pools [54] Evidence [65] Effect of lapse of registrations [66] Result and costs [68] Introduction [1] This is an appeal from a decision of Venning J delivered on 3 October 2005 (HC AK CIV ) allowing an appeal from a decision of the Assistant Commissioner of Trade Marks delivered on 22 March The Assistant Commissioner had declined to register Aqua-Tech as a trade mark in relation to swimming pools in class 6 and pools including swimming pools, spa pools, and therapeutic pools in class 19. [2] The issue on appeal is whether Venning J was wrong to decide that the respondent, Aqua-Tech Limited, had established a use of the trade mark, Aqua-Tech, in relation to spa and swimming pools. Factual background [3] Venning J at [2] - [7] describes the parties and the facts and the description which follows is largely taken from those paragraphs. [4] Both parties are involved in the spa and swimming pool markets. [5] The appellant, Aqua Technics Pool and Spa Centre New Zealand Limited, was incorporated in New Zealand in Aqua Technics markets and installs fibreglass spa and swimming pools in New Zealand. The pools are imported from an Australian company, Aqua Technics (WA) Pty Limited. The New Zealand company

165 is a wholly owned subsidiary of Aqua-Technics (WA) Pty Limited. Aqua Technics has been used as a trade mark in Australia since 1976 and in New Zealand by the appellant since April There is no suggestion that the use of the Aqua Technics mark by the appellant was in bad faith. [6] The respondent, Aqua-Tech, was incorporated in New Zealand in Aqua-Tech manufactures, sells and installs acrylic spa pools and swimming pools in a variety of materials. It sells primarily to trade. Aqua-Tech also manufactures and sells a variety of other goods and services related to the pool industry. [7] Aqua-Tech obtained registration for the mark Aqua-Tech for three classes including the two now in issue in The marks in relation to these two classes were unintentionally allowed to lapse between 1996 and Aqua-Tech made fresh trade marks applications for all three classes in August Aqua Technics lodged its trade mark applications in the relevant classes in October [8] Aqua Technics opposed the respondent s trade mark applications. It did so on two grounds. First, that registration would be deceptive or confusing (s 16 of the Trade Marks Act 1953). Second, that Aqua Technics had prior use of the mark. The latter ground turned on whether the respondent had shown it used the mark on spa and swimming pools prior to its use by Aqua Technics (s 26 of the 1953 Act). [9] The Assistant Commissioner said there could be no deception or confusion so the opposition in reliance on s 16 was unsuccessful. There is no appeal from that part of the decision. The Assistant Commissioner concluded that Aqua-Tech had failed to satisfy her that there was evidence showing continued or any use of the Aqua-Tech mark on spa or swimming pools. Hence the opposition to registration in relation to spa and swimming pools based on s 26 succeeded. [10] On appeal the only issue related to the use in terms of s 26. Venning J said the evidence established that the respondent had used the mark, Aqua-Tech, as a trade mark in relation to spa and swimming pools and accordingly allowed the

166 appeal. Orders were made that registration of the relevant trade marks proceed to registration without amendment. [11] There was an error in service of the documents relating to the appeal to this Court. This meant special leave was required for this appeal. Leave was granted in a decision delivered on 13 March Applicable principles [12] The parties agree that the effect of the transitional provision (s 203) of the Trade Marks Act 2002 is that this appeal is governed by the Trade Marks Act 1953 and the Trade Mark Regulations 1954 (SR 1954/222). [13] Section 26 of the 1953 Act provides that any person claiming to be the proprietor of a trade mark used or proposed to be used by that person who wants to register the mark: (1) shall apply in writing to the Commissioner in the prescribed manner for registration either in Part A or in Part B of the register. (2) Subject to the provisions of this Part of this Act, the Commissioner may refuse the application, or may accept it absolutely or subject to such amendments, modifications, conditions, or limitations, if any, as he may think right. [14] The proprietor of a trade mark in New Zealand is the first person to use that mark in New Zealand, see Philip Morris (NZ) v Liggett & Myers Tobacco Co (NZ) Ltd (No 3) (1978) 1 NZIPR 195 (SC). [15] The parties agree that the requirements for a legitimate claim to proprietorship under s 26 of the 1953 Act are as set out in Newnham v Table for Six (1996) Ltd (1998) 44 IPR 269 at 278 (HC) citing Brown and Grant, The Law of Intellectual Property in New Zealand (1989) at [2.8], that is: (1) There is no prior use or prior assertion of proprietorship.

167 (2) The applicant is using or has sufficiently definite intention to use the mark. (3) There is no fraud or breach of duty involved. [16] Here there is no question of fraud or breach of duty. The focus is on whether Aqua-Tech used the mark in relation to the pools before use by the appellant and the related question of whether Aqua-Tech was using or had sufficient definite intention to use the mark. [17] As to the type of use required to maintain a claim to proprietorship based on use, again, there is no dispute between the parties about that. The approach is described in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432 as follows: The prior use of the trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired [in a particular country] the statutory status of proprietor of the mark, is public use [in that country] of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person. [18] Section 2(2)(a) of the 1953 Act is relevant to this issue. The effect of s 2(2)(a) is that the sign that comprises the trade mark must be use of a sign upon, or in physical or other relation to, goods. Judgment of the High Court [19] After setting out the relevant background and discussing the evidence, Venning J observed that the evidence showed that Aqua-Tech primarily sold its swimming pools to an associated company, Cascade Industries Limited. Cascade acted as a retailer to sell the pools to the public. Venning J noted that Aqua-Tech s promotional materials for the trade referred to these pools as Cascade pools. [20] Venning J saw it as significant, however, that all of the products, including the Cascade pools, were advertised under the heading of Aqua-Tech. That mark

168 featured prominently at the head of the respondent s 1995/96 catalogue and its 2000 catalogue. Venning J said at [27] that he was satisfied that those in the trade dealing with Aqua-Tech: [W]ould know that if they were buying a Cascade pool for on-sale the pool had been manufactured by Aqua-Tech. The Aqua-Tech mark identified the pools as those of the [respondent]. [21] Venning J referred to New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (1989) 86 ALR 549 at 566 where Gummow J held on the issue of use: The use must be as a trade mark relevantly, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and the proprietor, whether with or without an indication of the identity of that person. The phrase in the course of trade is wide enough to cover steps necessary for the production of goods, as well as the actual placement of the goods on the market : Hermes Trade Mark [1982] RPC 425 at 432. [22] The Judge also placed some reliance on the fact there was evidence that each pool had a notice attached referring to Aqua-Tech. Venning J s conclusion was that the use of Aqua-Tech in the promotional materials and in the material attached to the pools met the requirement for the use of the sign in relation to goods. [23] Venning J said there was some, although limited, evidence of sales by Aqua-Tech direct to the public. In the context of that evidence, there was a catalogue advertising a Caprice pool sufficient to establish priority. [24] In terms of the spa pools, the Judge decided the Assistant Commissioner was wrong to disregard the evidence about sales by Aqua-Tech of spa pools under and by reference to the mark. Venning J concluded there was sufficient evidence to find Aqua-Tech had used the mark in relation to spa pools. [25] The Judge then dealt with Aqua Technics argument that any use as a mark was use in relation to services but not in relation to the goods. Venning J distinguished the authorities relied on by Aqua Technics and we come back to his reasoning on that.

169 [26] Venning J s conclusion at [50] was that, in summary: [T]he evidence establishes the [respondent] used the trade mark Aqua-Tech in relation to swimming pools and spa pools prior to 31 August If anything the earlier trade mark registrations would support rather than detract from such established use. [27] On this basis, Venning J allowed the appeal. The appellant s case [28] The appellant s case is that the respondent did not use Aqua-Tech as a trade mark upon or in physical or other relation to spa and/or swimming pools. This means, Aqua Technics says, that the respondent s rights lapsed when the corresponding registrations lapsed. Thus, when the respondent filed its applications in 2001, the respondent no longer had proprietorship because by then the appellant had used the mark. [29] The appellant developed its case by arguing first, that the respondent s use in relation to any form of pool was as part of a company or a trading name, namely, Aqua-Tech Industries Limited or Aqua-Tech Industries. The appellant says that Venning J was accordingly wrong to rely, for example, on promotional material and on stickers on the pools because those materials refer to Aqua-Tech Industries Limited and not to Aqua-Tech. The appellant s related argument is that if the mark is used in proximity to the goods, the use is not as a trade mark. [30] Second, the appellant s submission is that any trade mark use is as part of a trade mark in relation to services. The register having been split between goods and services, there has to have been use in relation to the goods to which the mark relates. The appellant says that Venning J was therefore wrong to distinguish cases such as Mitre 10 (New Zealand) Ltd v Benchmark Building Supplies Ltd [2004] 1 NZLR 26 (CA); The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334 (ATMO); and Re Application by Pumps N Pipes Pty Ltd (1990) 18 IPR 378 (PTMDO). The appellant says this case is on all fours with those cases.

170 [31] Finally, the appellant is critical of a number of aspects of the evidence for the respondent particularly that of Laurence Ogden, who is a director of Aqua-Tech. The submission is that this Court should look critically at the evidence for the respondent and that Venning J was wrong to rely on it. Use as part of a company or trading name? [32] It is the case that, particularly in terms of swimming pools, some of the promotional material relied on by Aqua-Tech and accepted as trade mark use by Venning J refers to Aqua-Tech Industries or to Aqua-Tech Limited. For example, Mr Ogden relies on a brochure for the Caprice swimming pool which is described as Caprice by Aqua-Tech Industries. The sticker attached to the pools to which Venning J refers reads as follows: Caution Cascade swimming pools are designed to eliminate the need to drain a swimming pool. As such, the water forms an integral part of the pool construction and the pool must never be emptied. For further information contact your local Cascade dealer or. Aqua-Tech Industries Limited. [33] On the basis of these references, the appellant says that when Mr Ogden claims sales of its spa pools feature the Aqua Tech trade mark the Court should be sceptical of that claim because an analysis of Mr Ogden s evidence shows that Mr Ogden is often referring in fact to Aqua-Tech Industries or to Aqua-Tech Industries Limited. [34] The appellant also points to the absence of evidence as to when the notice began to be used. [35] It is accepted by Mr Ogden that the use of the word Limited as part of the trading name of Aqua-Tech Industries Limited on these sorts of notices and other material is an error. Mr Ogden confirms that there has never been a company Aqua-Tech Industries Limited and that all of the trading activities since 1975 to which he refers as having been undertaken by Aqua-Tech have been by Aqua-Tech Limited, the respondent.

171 [36] We agree that there is some looseness in language at times in Mr Ogden s evidence. But Mr Ogden does distinguish in at least some of his evidence between our company name Aqua-Tech and our use of the Aqua-Tech trade mark in relation, for example, to swimming pools. Absent cross-examination of Mr Ogden at the hearing before the Assistant Commissioner, we do not consider much can be made of this point. [37] This aspect is not central in any event because the appellant accepts that it is possible for the mark to be used as part of the company or trading name. Certainly, as the respondent points out, use of a mark as part of a trading name was sufficient to amount to passing off in Anheuser-Busch Inc v Budweiser Budvar National Corporation [2003] 1 NZLR 472 (CA). [38] Here, the two catalogues relied on by Venning J are headed Aqua-Tech and there is no dispute that this sort of promotional material can comprise the use of a trade mark so long as there is a separate and distinct commercial impression from the other components of the image: Colorado Group Ltd v Strandbags Group Pty Ltd (No 2) (2006) 69 IPR 281 at [8] (FCA) citing BP plc v Woolworths Ltd (2004) 212 ALR 79 at [64] (FCA). The respondent is right that Aqua-Tech is stylised and so is separately identified and distinct from Aqua Tech Industries in the promotional material. We do not see any error in Venning J s reliance on this material as evidence of use of the mark. [39] As to when this notice was used, we see no reason to disregard Mr Ogden s evidence that a notice featuring the Aqua-Tech name and mark has been used since [40] Finally, under this head, it is relevant that the Assistant Commissioner found that those in the trade would by means of the catalogue see a connection between [Aqua-Tech] and the relevant goods. Because the Assistant Commissioner considered there was a need to show that members of the public would see Aqua-Tech as having trade mark significance, the Assistant Commissioner did not consider that the connection referred to was sufficient. Venning J found that in focusing on the public in this respect, the Assistant Commissioner erred.

172 [41] It is the case, as the respondent submits, that the connection identified by the Assistant Commissioner as between the respondent and the goods is exactly what is required to show trade mark use. That is because it is a link between Aqua-Tech and the origin of the goods. This answers the appellant s argument that any use of the mark is not use as a trade mark. [42] Slightly different issues arise in relation to the evidence about spa pools so we deal with that separately. Use in relation to services or goods? [43] The primary focus here is on the Cascade swimming pools. We illustrate the appellant s point by reference to the 1995/96 catalogue. The table of contents to this catalogue is headed up Aqua-Tech but the first item in the table of contents is described as Aqua-Tech Series 120 diving boards. The appellant accepts that this is a use of the mark in relation to the goods, that is, diving boards. That is not so, the appellant says, in terms of the treatment of swimming pools in the catalogue. The relevant descriptions in the table of contents for swimming pools are as follows: CASCADE Swimming Pool Kits Dealer Pricelists Cascade Pool Models, Shapes and Sizes Cascade Suggested Retail Price List. (Our emphasis.) [44] Then, when reference is made to the cautionary sticker on the swimming pools described above (at [32]) it is plain, the appellant says, that Aqua-Tech is simply providing the relevant services. [45] The appellant takes issue with the respondent s claim that the use of the Cascade mark is as a sub brand, as in Ford Mondeo or Ford Telstar with Mondeo and Telstar equating with Cascade. The appellant says that this analogy is flawed and points out that there has to be some distinction between, for example, the Ford motor company and the Ford modelling agency.

173 [46] This is essentially a factual question and the various factual findings made by Venning J were open to the Judge. The threshold is a low one given that a single use of the trade mark in relation to the sale of a boat was held to be a sufficient claim to proprietorship: Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 602 per Jacob J. [47] It is relevant to consider here the distinction Venning J drew between this case and the cases about use in relation to services relied on by the appellant namely Mitre 10, Hoyts, and Pumps N Pipes. Venning J s conclusion was that these cases were different because in those cases the party seeking to establish use as a trade mark was not the manufacturer of the goods. In the present case, by contrast, the respondent manufactured the goods for which it sought trade mark protection. [48] We consider Venning J was right that there was a factual difference between the cases relied on by the appellant and this case. The three earlier cases are simply examples of a factual situation where the trademark use relates to services and not to goods. For example, in Mitre 10 the claim of trade mark infringement related to brochures produced by Benchmark Building Supplies Ltd which used Mitre 10 s brochures but with Benchmark s retail outlets (Bunnings ) lower prices superimposed on the Mitre 10 brochures. This Court in concluding there was no trade mark infringement, said at [52] that the Mitre 10 mark was used to identify or distinguish the retail source, not the origin of the goods. [49] Similarly, in Pumps N Pipes, the applicant applied its mark in proximity to the manufacturer s marks. It was seeking registration in relation to its services, i.e. distributing, installing, maintaining or repairing them. Registration was refused because the applicant s use would associate the goods with the applicant as the provider of the retailing service only. It was important that the goods had the mark of the manufacturer who was ultimately responsible for the quality (at 384). In that case the applicant sought to establish a connection with quality control by the selection and distribution of the goods to the end user. That was not sufficient. [50] By contrast here, as the manufacturer of the goods, the respondent could establish the requisite connection to the quality of the goods. In this case, even if the

174 ultimate buyer did not know that Aqua Tech was the source of the pools, Cascade would certainly know that. Because of this connection with the quality of the goods, Venning J was correct to conclude that the respondent was not using the mark simply as a provider of services. [51] Venning J was also entitled to rely on the evidence about the Caprice swimming pools. The relevant brochure refers to Caprice by Aqua-Tech Industries (our emphasis). The appellant now queries whether this brochure was in use at the relevant time. On that issue, Mr Ogden describes this as a brochure for the Caprice pool. Mr Anthony Sutherland, also a director of Aqua-Tech, says they sold the pool between January 2001 and the end of 2003 and he exhibits the 2002 catalogue description of this pool. [52] It was an available inference that this catalogue was in use at the relevant time. [53] The appellant is critical of the later reference in this brochure to the Caprice pool from Aqua-Tech but, read in conjunction with the earlier notation, Caprice by Aqua-Tech, we do not consider anything turns on the use of the word from. Spa pools [54] In relation to spa pools, the issue is whether the Judge was right to accept that the 1995/1996 catalogue together with Mr Ogden s evidence was sufficient to confirm that the appellant marketed spa pools in the course of trade. [55] This raises a question about the reliability of Mr Ogden s evidence. There are two aspects. The first relates to Mr Ogden s reliance on a 1975 brochure and second, Mr Ogden s evidence that some spa pools sold by Aqua-Tech were embossed with the Aqua-Tech trade mark. [56] Turning first to the appellant s argument about the 1975 catalogue, Mr Ogden s evidence is that since 1975 Aqua-Tech sold and installed spa pools under the trade mark Aqua-Tech and continues to do so. The 1975 catalogue he

175 produces in support of this claim refers to Aqua-Tech spa pools and to Aqua-Tech spa pools as being on display now. [57] The appellant s submission is that the 1975 catalogue should be disregarded because it is under the name Aqua-Leisure Centre and the Court cannot be satisfied any intellectual property in the Aqua-Tech mark was properly transferred from Aqua-Leisure Centre to Aqua-Tech. [58] On this issue, Mr Ogden explains that he and another man, Robert Smith, started up the business now called Aqua-Tech Limited in the early 1970 s. The business was transferred to the company Aqua-Tech Limited on its incorporation in Aqua-Leisure Centre is the name under which the business originally traded. [59] We consider it was open to infer that intellectual property in the Aqua-Tech mark was properly transferred to Aqua-Tech. Any other inference would be somewhat unreal given what has occurred. [60] The appellant also says that the Assistant Commissioner was right that there was nothing more than mere assertion in Mr Ogden s evidence as to the sale of spa pools to Australia. [61] What Mr Ogden said was that Aqua-Tech spa pools have been extremely popular in the past with thousands sold since the early 1970 s including many that were exported to Australia. Mr Ogden s evidence is that the Australian pools were embossed with the Aqua-Tech trade mark and that Aqua-Tech continues to offer for sale and sell spa pools both direct to the public and to its distributors on demand. [62] This later evidence was in reply to evidence from Brian Hoffmann on behalf of the appellant who said: I see Mr Ogden has included an example of the Aqua-Tech trade mark used in relation to spa pools in This surprises me because I know the swimming pool and spa industry well and have never encountered an Aqua-Tech spa pool. I can only assume that Aqua-Tech was used in relation to spa pools in 1975, but has not been used in recent years.

176 [63] Mr Hoffmann also noted that Mr Ogden had not included examples of promotions of the Aqua-Tech brand. Mr Hoffmann s evidence was that this was not surprising because none of this promotional material linked the Aqua-Tech mark to spa or swimming pools. [64] We agree with Venning J that Mr Ogden s evidence is more than mere assertion on this point. Venning J was right that in reaching the conclusion the evidence only amounted to an assertion the Assistant Commissioner did not take account of the 1995/96 catalogue. In the 1995/96 catalogue there was a reference to classic hot tubs which were plainly spa pools. These hot tubs were part of the Aqua-Tech catalogue marketed to the trade under the mark Aqua-Tech. That gave support for Mr Ogden s evidence that Aqua-Tech sold spa pools under and by reference to its name and trade mark Aqua-Tech. Evidence [65] We have dealt with the particular issues raised by the appellant which are said to impact on the reliability of Mr Ogden s evidence. We add that if the appellant wanted to challenge Mr Ogden s evidence, the appellant should have asked that he present himself for cross-examination. It is unfair to challenge the veracity of a witness when the challenge has not been put to him, as it could have been. The evidence is, on its face, sufficient to establish proprietorship. Effect of lapse of registrations [66] Finally, the appellant suggests that Mr Ogden was not right when he said that the lapse of the earlier marks was unintentional. The submission is made on the basis that one of the three marks which lapsed was subsequently renewed. [67] There is no evidence to support the proposition that one of the three marks was renewed. In any event, we see no reason for taking a different view of Mr Ogden s evidence. We add that, as Venning J said, there is no evidence to suggest

177 This page has been modified for the purposes of section 9(2)(b) of the Official Information Act 1982 because it contained material that appeared to be commercially sensitive. an intention to abandon and the catalogues are clear evidence of the respondent s intention to use the trade mark in relation to its goods. Result and costs [68] The appeal is accordingly dismissed. The respondent shall have costs of plus usual disbursements. Solicitors: James and Wells Lawyers, Auckland for Appellant A J Parks Law, Auckland for Respondent This page has been modified for the purposes of section 9(2)(b) of the Official Information Act 1982 because it contained material that appeared to be commercially sensitive.

178 Judicature Act 1908 No 89 (as at 03 June 2014), Public Act 7.28 Cross-examination o... Page 1 of 1 23/06/2014 New Zealand Legislation Judicature Act 1908 Warning: Some amendments have not yet been incorporated 7.28 Cross-examination of maker of affidavit A Judge may in special circumstances, on the application of a party, order the attendance for crossexamination of a person who has made an affidavit in support of, or in opposition to, an interlocutory application. Compare: 1908 No 89 Schedule 2 r 253(2)

179 Judicature Act 1908 No 89 (as at 03 June 2014), Public Act 9.74 Cross-examination o... Page 1 of 1 23/06/2014 New Zealand Legislation Judicature Act 1908 Warning: Some amendments have not yet been incorporated 9.74 (1) (2) (3) (4) Cross-examination of person who has sworn affidavit A party desiring to cross-examine a person who has sworn or affirmed an affidavit on behalf of an opposite party may serve on that opposite party a notice in writing (which may be by letter addressed to the opposite party s solicitor) requiring the production of that person for cross-examination before the court at the trial. The notice must be served, and copies of it filed in the court and delivered to all other parties who have taken any step in the proceeding, not less than 3 working days before the day fixed for the trial. The affidavit of a person who is not produced must not be used as evidence unless the evidence is routine, or there are exceptional circumstances, and in either case the court grants leave. The party to whom the notice is given is entitled to compel the attendance of the person who has sworn an affidavit for cross-examination in the same way as that party might compel the attendance of a witness to be examined. Compare: 1908 No 89 Schedule 2 r 508

180 ! " # $ % & % ' # & &! (! ) * +, - +. / / 0-2 +, $ - / 5 / : ; < = ; = A? > B C D E F G H H G I 7 ; J 9 A D ; ; 9 : K L? M? N N =? O P > Q R F < = E S C S Q M Q P F < = D C C S C F? M F T Q R R S C C S Q M = > Q P ; = A? > B F U V K E F Q W = > G H U G X 9 ; Y Z K [ [ \ I 7 ; 9 : 7 D ; I K 7 D ] ] I A I ; 9 8 D N N = O O? M F D 7 8 \ 9 ^ Y D ^ I 7 T K : _ K : D ; 9 8 : = C N Q = M F J =? > S M ` a U A? b G H U c T Q d M C = O a e K 6 N F Q M f T? ; D J d F < g? S F = P Q > D N N = O O? M F 7 e : Q W W P Q > : = C N Q = M F e ` R = M F a G H e d M = G H U c h ' i " ( i "! % h

181 j k l m n o p k q m j r U s ; < =? N N = O O? M F t Z Q ` ` C I M F = > M? F S Q M? O ] S R S F t? N N =? O C F < = E S C S Q M Q P F < = D C C S C F? M F T Q R R S C C S Q M = > Q P ; = A? > B C F = E O S M = S F C? N N O S E? F S Q M F Q > = ` S C F = > F < = F = R? > B a r G s ; < =? N N O S E? F S Q M g? C C d E E = C C P d O O b Q N N Q C W b F < = > = C N Q = M F t g < S E < S C F < = N > Q N > S = F Q > Q P d M > = ` S C F = > F = R? > B C t F < = R Q C F N > Q R S M = M F Q P g < S E < S C a r c s ; < = > = C N Q = M F S C Q g M W b? A > L > = > S E B J = > u Q ` I I I t g < Q S C E Q R R Q M O b > = P = > > F Q? C Z Q ` v A > J = > u Q = N Q C = C F <? F < = <? C d C F < = M? R = Z Q ` S M E Q M M = E F S Q M g S F < < S C W d C S M = C C P Q > c w b =? > C v J S C N > S R? > b N > d E F S C? C d > P W Q? g? x t F < = A > Zog s \ = x Y? x > = P = > > F Q S M F < = O Q ` Q? W Q y = v I F C = = R C F Q W = F < = O? > ` = C F C = O O S M ` W Q? g? x v ; < = > = E? M W = M Q d W F F <? F A > Zog s Sex Wax and the accompanying logo <? C? > = N d F? F S Q M S M F < = C d > P S M ` R? > B = F S M 7 = g Z =? O? v r z s ; < =? N N = O O? M F g? C P Q d S M D d C F >? O S? S M U { { G v I F C Q > S ` S M? O N > d E F g? C C g S R g =? > ` Q ` ` O = C t? F < = M? R = Z Q ` ` C S C? N F? F S Q M Q P F <? F t Q > R Q > = N? > F S E d O? > O b Q P F < =? W W > = y S? F S Q M Q P F < = g Q goggs. ; < = ` Q ` ` O = C g = > = C Q S M 7 = g Z =? O? P > Q R U { { z F < > Q d ` < F < = Y? > = < Q d C = E <? S M v ; < = E Q R N? M b F < = M C F? > F R? M d P? E F d > S M ` C g S R g =? >? S R N > S R? > S O b? F F < = > = E > =? F S Q M? O C g S R R S M ` N Q Q O R? > B = F v ; < = C = S F = R C g = > = R? > B = F S M y? > S Q d C E Q d M F > S = C S M E O S M ` 7 = g Z =? O? d = > Z Q ` ` C ; Q ` ` C t W d F? > Q d F < = b =? > G H H H F < = > = g? = E S C S Q M F? B = M F Q E Q R W S M = F < = W >? C S M F Q Z Q ` ` C v ; < = N > = C = M F? N N O S E? F S Q M F Q > = ` S C F = > Z K [ [ \ S M E O? C C G V t F Q > = N O? E = F < = = x S C F S M ` Z Q ` ` C ; Q ` ` C > = ` S C F >? F S Q M t > = P O = E F C F <? F W >? S M ` R Q y = v

182 C r V s T O? C C G V E Q y = > C a } ~ ƒ ˆ Š ˆ ˆ Š Œ ˆ Š Œ } Ž Œ Š Ž Œ Œ Œ Š Œ } ˆ Œ ˆ } ˆ Š ~ ˆ Œ Š ˆ ˆ Š Œ ˆ Š Œ Ž Š Œ } ~ ƒ ƒ ˆ Œ Œ r s ; < = D C C S C F? M F T Q R R S C C S Q M = > d N < = F < =? N N O S E? F S Q M Q M F < = W? C S C F <? F a respondent s objection to Zogg C? S F g? C = S M P? S F < C U G Q P F < = ; = A? > B C D E F G H H G W F < = > = S C O S B = O b F Q W = E Q M P d C S Q M C U U Q P F < = D E F? E F < =? N N O S E? M F M Q C d P P S E S = M F O = P S M S F = S M F = M F S Q M F Q d C = F < = R? > B C c G Q P F < = D E F v š p œ l m o j n r s A > Herzog s business began in Cal S P Q > M S?? > Q d U { H v J = C Q C d > P W Q? C v I M U { G < = E F Q R? M d P? E F d > =? C = O O? C d > P W Q? g? x v I F g? C R? > B = F d = > the brand MR ZOG S SEX WAX, a brand that has remained unchanged, as has the O Q ` Q S M F Q g < S E < S F g? C S M E Q > N Q >? F v r w s J S C E Q R N? M b g? C Q > S ` S M? O O b M? R Z Q ` I d C F > S = C v I F P Q > R? O O b E <? M ` S F C M? R = S M U { w F Q \ = x g? x I M E Q > N Q >? F F < = M? R = Q P F < = > = C N Q = M F W d F <? C E Q M F S M d F Q d C = F < = M? R = Z Q ` I d C F > S = C v I F S C F < S C M? R = F <? F? N N =? > C Q M? O O S F C W d C S M = C C P Q > R S M y Q S E = C t C F? F = R = M F C t C? O = C? N d > E <? C = Q = > C = F E v r { s A > J = > u Q = N Q C = C F <? F < S C M? R = Z Q ` S C S M F = ` >? O F Q F < = g? x t g < S E < g S O O W = referred to, and ordered, as either a bar of sex wax or? W? > Q P Z Q ` C v ; < = E Q R N? M b <? Q = C C = O O Q F < = > N > d E F C t? O F < Q d ` < S F S C P? S > F Q C? b F < = C d > P W Q? g? x? E E Q R N? M b S M ` N > d E F Q R S M? F = v L Q > F < = N = > S 7 Q y = R W = > U { { F Q e d M = G H U H t F < = C = g? x? W Q? > = O? F N > d E F C? E E Q d M F P Q > V N = > cent of Zog Industry s C? O = C F Q 7 = g Z =? O? v ; < = W d O B Q P F < = W? O? M E = Q P C? O = C g? C = d N Q P F C < S > F C? W Q d F G N = > E = M F v ; < = F C < S > F S R? ` = C F <? F <? y = W = = M S M E O S M F < = = y = M E =? O R Q C F? O g? b C <? y = = S F < = > F < = E Q R N O = F = O Q ` Q t Q Q R S M? M F > = P = > = M E = F Q \ = x Y? x v ; < =

183 O? W = O t S M g <? F = y = > P Q > R t S C N > Q R S M = M F? Q P F = M Q E E d N S = C F < = g < Q O = Q P F < = P > Q M F Q > W? E B Q P F < = F C < S > F v r U H s \ = x g? x I M E Q > N Q >? F <? C M = y = > C Q d ` < F Q > < = F = R? > B > = ` S C F >? F S Q M C S M 7 = g Z =? O? v r U U s D C M Q F t Z Q ` ` C C F? > F S M U { { G? W = `? M C = O O S M ` S M 7 = g Z =? O? S M U { { z v Y < = M F < = E Q R N? M b = x N? S M F Q C g S R g = ar under the label Zogg C ; Q ` ` s t S F > = ` S C F = > F <? F R? > B S M y? > S Q d C E Q d M F > S = C t S M E O S M ` 7 = g Z =? O? t S M U { { v J Q g = y = > d = F Q Q y = > C S ` < F F < S C g? C M Q F > = M = g F F < =? N N > Q N > S? F = F S R = v Z Q ` ` C E O? S R C F Q W = F < = O? > ` = C F O = S C d > = C g S R R S M ` W >? S M D d C F >? O S? t 7 = g Z =? O? F < = 6 M S F ž S M Q R v I F <? C W = = M C = O O S M ` S M 7 = g Z =? O? C S M E = U { { V t g S F <? N N > Q x S R? F = O b U t H H H S F = R C C Q W = F g = = M D N > S O G H H? L = W > d? > b G H U U v I F F? > ` = F C F < = N Q Q O C g S R R = > R? > B = F? S F C N > S R? > b > = F? S O Q d F O = F C? > =? Ÿ d? F S E E = M F > = C t C g S R C E < Q Q O C? C R? O O? Ÿ d? F S E > = F? S O = > C v q j n q j œ k š k k š q p š k q m j š š n q j š n š q k r U G s \ = E F S Q M U G Q P F < = D E F Q W O S ` = C F < = ; = A? > B C T Q R R S C C S Q M = > F Q > = = E F? M? N N O S E? F S Q M F <? F S C = S M P? S F < v I M? C C = C C S M ` F < S C ` > Q d Q P E <? O O = M ` = F < = D C C S C F? M F T Q R R S C C S Q M = > = M F S P S F < = > = O = y? M F F = C F? C W = S M ` a ˆ ˆ Š ˆ ƒ ~ ˆ ˆ ˆ Ž Ž ~ } ƒ ª Œ ˆ } «ˆ ˆ ~ ˆ ˆ ƒ Œ Œ } Œ ˆ } Œ ƒ Ž Ž ~ Š Š ˆ Œ Š ƒ ~ ˆ Š ˆ Š ˆ Œ ˆ ƒ ƒ Ž ˆ Š Œ ƒ Œ Ž ƒ Ž Š Ž ˆ Š Œ ƒ Š Œ r U c s ; < S C F = C F g? C F? B = M P > Q R ± ² ³ ³ µ ³ ¹ º» ¼ ¹ µ ½ t ¾ g < S E < S F C = O P C Q d > E F < = F = C F P > Q R F < = 9 M ` O S C <? Y? O = C T Q d > F Q P D N N =? = E S C S Q M S M ¼ ² À Á ² ¼ Â Ã Ä Ä Å Æ Ç ² ¹ Æ ³ v È Harrison s É Ê Ë Ì Í Î Ï Ï Ð Ñ Ò Ï Ó Ò Ô Õ Ö Ë Ë Ó Ë Ø Õ Ù Ú Û Ü Ý Þ ß à á â ã ä å Ù Ý æ ç è é é ê ë ì í î ë è ï è ð î ñ ò ó ô õ ö ô è é é ê ø ô Þ ä å ô ù ú û ü ý þ Î Ø Ø ÿ Ó Ò Ï Ð Ë Õ Ò Ï Î Ë Ø Î ÿ Ï Ò è é é ì Ý Þ ï é è í ð è é é î Ú ï é ã è è ü

184 ² ² Ç ¹ ³ À ¼ Å Æ ³ ² Å Å ² ¹ Æ ³ ² À ² Æ ¹ º r U z s Y < = M Z Q ` ` C P S > C F E Q M F = R N O? F M D d C F >? O S? M > = ` S C F >? F S Q M P Q > S F C ` Q ` ` O = C t S F? N N > Q? E < A > J = > u Q ` F Q C = = B? ` > = = R = M F F <? F < = g Q d M Q F Q N N Q C = S F v A > J = > u Q = N Q C = C F <? F F < = F < = M Q g M = > Q P Z Q ` ` C S F <? C C S M E = W = = M C Q y = > W? O O b N > Q R S C F Q a limit the products of what he described as his small Australian company to Œ Œ ƒ ~ ˆ Œ I F g? C P Q > F <? F > =? C Q M F <? F < M Q F Q N N Q C = F < = S M S F S? O > = ` S C F >? F S Q M t g < S E < g? C P Q > Z K [ [ \ S M E O? C C { t W = S M ` Q N F S E? O? N N? >? F d C t = b = g =? >? ` Q ` ` O = C t? E O? C C G w ` b R M? C F S E? C N Q > F S M `? > F S E O = C v ; < = = F = Q P > = ` S C F >? F S Q M P Q > F < S C F = R? > B g? C U z 7 Q y = R W = > U { { U v r U V s ; < = < S C F Q > b Q P E Q R R d M S E? F S Q M C W = F g = = M F < = F g Q N? > F S = C C d W C = Ÿ d = M F F Q F < S C N Q S M F S C M Q F? ` > = v ; < = > =? > S P P = > = M F > = E Q O O = E F S Q M C v A > A E T Q M M Q E < S = t F < = C Q M Q P Z Q ` ` C Q g M = > g < Q F < = S M S F S? O U { { G E Q M y = > C? F S Q M g S F < A > J = > u Q ` t C? b C F < = > = <? C W = = M Q E E? C S Q M? O E Q M F? E F C S M E = U { { G t? F <? F < =? A > J = > u Q ` <? y = C N Q B = M C = y = >? O F S R = C v \ N = E S P S E? O O b < = C? b C A > J = > u Q ` g? C? N N > Q? E < S M G H H z F Q C = = S P? ` > = = R = M F E Q d W = > =? E < W = E? d C =? M? N N O S E? F S Q M F Q > = ` S C F = > Z K [ [ \ S M F < = 6 M S F \ F? F = C g? C W = S M ` N > = y = M F W b A > Herzog s = x S C F S M ` > = ` S C F >? F S Q M C v J Q g = y = > t? ` > = = R = M F E Q d M Q F W = > =? E < W = P Q > = F < =? N N O S E? F S Q M O? N C v A > A E T Q M M Q E < S =? O C Q E Q R R = M F C Q M? M = R? S O F <? F < = C = M F S M G H H { v I F E Q M F? S M C C F? F = R = M F C? W Q d F g <? F Z Q ` ` C S M F = C F Q v A > McConnochie s eviden E = S C F <? F S F > = O? F Q M O b F Q? E d > > = M F 6 M S F \ F? F = C F = R? > B? N N O S E? F S Q M v r U s ; < = = y = M E = P > Q R A > J = > u Q ` S C C Q R = g <? S P P = > = M F v J = C? b C F <? F P Q O O Q g S M ` F < = S M S F S? O U { { G E Q M y = > C? F S Q M t < M Q F O =? > M d M F S O G H H Q P F < =? F F = R N F F Q > = ` S C F = > Z Q ` ` C ; Q ` ` C t? d O F S R? F = O b Z Q ` ` C v J = F < = M P Q > F < = P S > C F F S R = t P Q O O Q g S M ` > = C =? > E < S C E Q y = > F <? F Z Q ` ` C > = ` S C F >? F S Q M C S M R? M b E Q d M F > S = C S M g < S E < A > Y D ^? O C Q < = E F S y = > = ` S C F >? F S Q M C v J = E Q M F S M d = C a Zog s SEX Š ˆ Š Š ˆ ˆ Œ Ž ˆ «ˆ Š ~ } ~ Œ ª ˆ ˆ ƒ ƒ Š Ž ˆ ƒ Š California with Zogg s, Leo Gestetner) and written claims (an from Zogg s Neil McConnochie) that they had ƒ ƒ ˆ Š ˆ Œ ƒ ˆ Œ Š Š ˆ whatsoever, I readily found Zogg s swimwear being marketed on the web as Š Œ Š Œ for surfing.

185 " # # # r U s ; < = F g Q B = S P P = > = M E = C F <? F = R = > ` P Q O O Q g S M ` A > g = > = F <? F a McConnochie s evidence? there were discussions in 2004 about registering Zogg s in class G V S M F < = 6 M S F \ F? F = C v A > J = > u Q ` C? < M Q F B M Q g? M b F < S M `? W Q d F Z Q ` ` C ; Q ` ` C t Q >? M = x N? d C = Q P Z Q ` ` C d M F S O G H H? W F < = U { { { A E T Q M M Q E < S = = R? S O > = O S Q M W b A > J = > u Q ` g? C t? E E Q S M ` F Q A > A E T Q M M Q E < S = t C Q O = O b S M > = O? F S Q M F Q F < = 6 M S F \ F? F = C R? > B = F t? M Q W > = > E Q M F = x F v r U w s A > J = > u Q ` P S O > = N O b = y = M E = v I M F <? F = y = M E = < = E Q M P S > R C < S C =? > O S = > = y = M E = t g S F <? N? > F S E d O? > > = P = > = M E = F Q F < = Q > S ` S M? O N? >? ` >? N < g < S E < C? < = Q M O b W = E? R =? g? > = S M G H H v ; < S C? N N =? > C F Q W = M S? O Q P A > McConnochie s claims of G H H S C E d C C S Q M C t W d F F < = > = S C M Q = x N > = C C > = P = > = M E = W b A > J = > u Q ` F Q F < = E O? S R v A > J = > u Q ` > = C F? F = C F <? F < = <? C M Q F E Q M C = M F F Q F < = > = ` S C F >? F S Q M Q P F < = F = R? > B Z K [ [ \ P Q > C g S R g =? > Q > E O Q F < S M ` t M Q > F Q F < = d C = Q P Z K [ [ \ P Q > C g S R g =? >? E O Q F < S M ` v r U { s I F S C M = E = C C? > b P S M? O O b F Q F d > M S M R Q > = F? S O F Q F < = G H H { A E T Q M M Q E < S = = R? S O v ; < = = R? S O g? C g > S F F = M? P = g R Q M F < C W = P Q > = F < = 7 = g Z =? O? N N O S E? F S Q M g? C = v I F S C? M S R N Q > F? M F N O? M B S M F < = E S C S Q M d = >? N N =? O v I P E S F S M P d O O S F S C O? > ` = O b C = O P = x N O? M? F Q > b v ; < = = R N <? C S C S M F < = = R? S O S C F <? F Q P F < = D C C S C F? M F T Q R R S C C S Q M = > a ˆ } ˆ Ž Œ Œ ˆ! ˆ Š ˆ Ž Œ Œ ˆ! Œ ƒ } ˆ Œ Ž ˆ ƒ ˆ ˆ ˆ Œ ƒ Ž ~ ˆ Œ Š ˆ ~ ˆ Š ˆ Ž ~ Œ «ˆ ˆ ˆ ƒ ƒ ˆ Š Š «ˆ ~ ~ ƒ ƒ ˆ ƒ ƒ ~ Š ˆ ˆ ˆ ~ Š ˆ Š Š Œ } Œ Œ ƒ Œ ƒ Š ˆ Œ Ž ˆ } ˆ $ Œ ~ Œ Œ % & ~ } ˆ ƒ Œ ˆ ' Œ ˆ * Œ } Œ Œ ˆ ƒ ~ ƒ ˆ ˆ Ž Š ˆ «Œ ~ ˆ ƒ ˆ $ ( ) ) ( ) ) Š ˆ Œ ˆ Š ˆ ƒ ~ Œ Œ % & } Œ Š ˆ Œ ˆ Š ˆ ƒ +,, % ˆ ƒ ˆ ~ Œ Š ˆ Œ ˆ Š ˆ $ ( ) ) ƒ } ~ Œ Œ ˆ Œ, ƒ % - ' Œ Š ~ Š ˆ ˆ ˆ Š ˆ Š Œ }! Œ } ˆ. Œ ˆ ƒ } ˆ Š ˆ ˆ ˆ ƒ Ž ƒ Ž ~ } ˆ ˆ ˆ ƒ ˆ Š ƒ ˆ ˆ ƒ ˆ Š Œ ƒ / Š ˆ Œ ˆ ƒ ˆ ˆ Š ˆ ˆ } ˆ. Œ ˆ ƒ } ˆ Š $ ( ) ƒ ~ Œ Œ % - Š 0 Š / ~ Œ

186 # # # # * * # # # # # # # # Š ˆ ƒ ˆ Š ƒ Š + % ˆ Š Œ ƒ Š ˆ ƒ ƒ ˆ ˆ ƒ ƒ ˆ Š ˆ Š ƒ ˆ «ˆ Š ƒ «ˆ ƒ Œ ƒ ˆ Œ Œ ƒ 1 ƒ 2 ƒ ª ~ ˆ 3 ƒ ) Š Ž 4 ˆ } ˆ Œ ~ Œ ˆ ~ Œ ˆ Š } Œ ~ ~ ˆ «ˆ ~ Ž ˆ ƒ ƒ Œ Š } ƒ Ž Š «ˆ Š Š Œ ˆ «ˆ Š ~ Œ Ž Š ƒ Œ Š ƒ Œ ƒ } ~ ƒ $ Œ ƒ % ˆ ˆ } Œ ƒ Œ ˆ Œ ˆ ˆ Š ˆ Š ˆ ƒ ˆ Š ƒ Ž Š Š ~ ƒ ˆ Š ˆ $ ( ) ) Š ƒ ˆ ~ Š ˆ ˆ $ ( ) ) ( ) ) Š ˆ Š $ ( ) ) Œ Œ Œ ƒ Š 3 ˆ Š Š ƒ ƒ 7 ˆ ˆ Š ˆ «Œ ˆ Œ Œ ƒ Š ˆ ƒ Š ~ Œ ˆ } Š Š ˆ ƒ Š $ ( ) ) ( ) ) Œ Ž Š Š ˆ ƒ ˆ ~ } Œ Œ ƒ Š ~ Š ˆ ƒ ˆ ƒ ƒ ƒ ˆ Ž Ž ~ } ƒ Š $ ( ) ) ~ ˆ ~ ˆ Š ˆ «ˆ Š ˆ Ž «ˆ Œ } Š Œ Œ $ ( ) ) Š Œ ˆ Š ˆ Œ ƒ Œ ƒ Š ƒ Œ Ž Š ˆ ƒ ˆ ˆ. ƒ ˆ Š Œ ˆ Œ }! ˆ Š ˆ ƒ Œ Š } Š Š ˆ ƒ Š ˆ Œ Š ƒ } Œ Œ ˆ Œ } Œ ˆ «ˆ Š ˆ ƒ } ˆ } ~ ~ ˆ ƒ Œ ƒ ˆ 8 Œ ˆ ˆ Š ƒ Œ ˆ ˆ ˆ Ž Š Š ˆ Œ Œ ƒ Š / Š ˆ Ž Š ˆ Œ ˆ ƒ «ˆ Œ ˆ ˆ Œ ˆ Œ ˆ ˆ Š Œ Š ˆ ˆ ˆ Š ˆ ~ Š ˆ } ~ ƒ Ž Ž Š ˆ } ˆ Š ˆ ˆ ƒ } ~ ~ ˆ 9 : ; < = A B C D C A : E ; F A ; < G > = A G A : = I ; G J > K : : L M? : : C? N C A K G I ; G G A O G A K =? K > B I? A : : : C? N P E < G E ; : A = D A E ; ; > K : = D A Q G B D K ; K : E? G K =? : ; = =? : = ; = A G = D A R < G I O K = A P ; G = A G N : ; I C A = : <? = : S O K : < K > C A K G ; G ; = D A G : < G I C A K G T ˆ Ž Œ Œ ˆ! «ˆ ~ 3 Œ } Œ ~ ~ «ˆ ˆ ˆ Š ƒ ˆ Š Œ ƒ ƒ ˆ Š ƒ Ž Œ ƒ ƒ ' } ˆ Œ Š Ž Š Ž Œ ˆ ˆ. Œ ˆ ƒ } ˆ Š ˆ ˆ ˆ ƒ Œ Œ } Œ Œ ˆ Š Š Š ˆ «ˆ } ˆ Œ Œ }! ˆ ~ Œ ˆ ˆ ƒ ˆ Ž Š } } ˆ Š Œ ƒ Ž Š } Œ ƒ ~ Œ ƒ ƒ } ~ } ƒ Œ ˆ Š ƒ ~ Š ~ ~ ~ ˆ Š ˆ ˆ Œ ~ Œ } ˆ. Œ ˆ ƒ } ˆ ƒ ~ Œ Œ, ª ˆ ˆ ˆ Š } ˆ } ˆ Š } ~ ˆ ƒ ˆ ƒ ˆ Š ˆ Œ ~ ˆ Ž ˆ ƒ Œ } Œ Œ ƒ ~ ˆ ƒ ˆ Š ˆ Œ ˆ ƒ ˆ ˆ ƒ Œ } Œ Œ Š ˆ Š Ž ~ ˆ Œ ˆ ~ ˆ ˆ ƒ Œ ~ ~ ˆ ƒ ˆ 8 Š ƒ ˆ Š ˆ ƒ 4 Œ U ˆ Œ ƒ ~ ˆ ˆ Ž ˆ ˆ Š ƒ ~ Œ ƒ 4 ' Š ƒ ƒ ˆ + 6 V W ' Œ ˆ Š Œ ˆ Š ˆ Š ˆ ˆ ƒ Ž Ž Š ƒ Œ } Œ Œ ˆ ˆ ~ ˆ Œ Œ Œ ƒ Š ˆ X Š ˆ ˆ ƒ Œ Œ Š } ƒ ˆ «ˆ ~ Ž ˆ ƒ } Ž ~ ƒ } ˆ ƒ ˆ Š 0 Œ ~ Š Š ˆ Š ƒ Š Œ ƒ Y Å Æ ³ ³ À ¼ ² Ä Ä ² Å r G H s ; < = D C C S C F? M F T Q R R S C C S Q M = > P S > C F C = F Q d F F < = E Q R N = F S M ` N Q C S F S Q M C v \ = x g? x I M E Q > N Q >? F s submission g? C F <? = C N S F =? C C d >? M E = C W b F < =? N N = O O? M F F <? F Z K [ [ \ g? C F Q W = d C Q M O b Q M C g S R R S M ` ` Q ` ` O = C t? F <? F S F g Q d M Q F W = d C S M F < = C d > P E? F = ` Q > b P Q > g = F C d S F C t E? C d? O g =? > Q > Q F < = > C d > P g =? > F < =? N N O S E? F S Q M? P d > F < = >

187 S M y = C F S `? F S Q M C W b \ = x g? x I M E Q > N Q >? F C < Q g F <? F F < S C S C M Q F F > d = v ; < S C E Q M P O S E F S M ` N Q C S F S Q M? R Q d M F F Q P? S F < v r G U s Z Q ` ` s N Q C S F S Q M g? C F <? F F < = U { { S C E d C C S Q M > = O? F F Q D d C F >? O S? t F < = G H H { = R? S O > = O? F F Q F < = 6 M S F \ F? F = C? N N O S E? F S Q M t? M Q P Q > R? O? ` > = = R = M F = y = > = x S C F F <? F a S Z Q ` ` C g Q d W = O S R S F S M S F C ` Q C S S A > J = > u Q ` g Q d W = B = N F? N N >? S C Q = y = O Q N R = M F C Q > S S S Z Q ` ` C g Q d M Q F = x N? S F C W d C S M = C C v r G G s ; < = D C C S C F? M F T Q R R S C C S Q M = > > =? E < C = > S = C Q P P? E F d? O E Q M E O d C S Q M C F <? F O F Q F < = E Q M E O d C S Q M Q P P? S F < v ; < = B = b P S S M ` C? N N =? > F Q W = a? Z Q ` ` C g? C? g? > = t P > Q R U { { G t F <? F F < = M S E B M? R = Z Q ` g? C S M E Q > N Q >? F S M F Q F < = W >? S M ` P Q > F < = C d > P W Q? g? x v ; < S C S C g < b S F P = O F? M = F Q E Q M F? E F A > J = > u Q ` S M F < = P S > C F N O? E = W A > Herzog s evidence is the only direct evidence of what was said in U { { G? S F g? C F <? F Z Q ` ` C g Q d O S R S F S F C N > d E F C F Q C g S R R S M ` ` Q ` ` O = C v L d > F < = > t d M F S O G H H A > J = > u Q ` W = O S = y F < =? N N O S E? M F E Q M F S M d F Q O S R S F S F C Z K [ [ \ F = R? > B F Q C g S R R S M ` ` Q ` ` O = C S M? E E Q M E = g S F < F < S C U { { G? ` > = = R = M F E S M G H H { A > A E T Q M M Q E < S = t C < Q > F O b W = P Q > = P S O S M ` F < = 7 = g Z =? O? N N O S E? F S Q M t S S E? F F <? F F < = Z K [ [ \ W >? M Q F F < = 6 M S F \ F? F = C F = R? > B g Q d M Q F W = d C S M > = O? F S Q M F Q C Q R = S F = R C E Q y = > W b E O? C C G V v r G c s L > Q R F < = C = E Q M E O d C S Q M C t g S F < Q S F S Q M? O > =? C Q M S M ` t S F g? C < = F <? F P Q > Z Q ` ` C F Q M Q g C = = B? > = ` S C F >? F S Q M E Q M F >? > b F Q F < S C d = > C F? S M `? R Q d M F F Q P? S F < v Ç» Ç Æ Æ ³ r G z s ; < = appellant s P S > C F E <? O O = M ` = S C F Q F < = E Q M E O d C S Q M F <? F A > J = > u Q M Q F B M Q g d M F S O G H H Q P F < = y = O Q N R = M F Q P Z Q ` ` C ; Q ` ` C t F < = C? O = Q P C g S R g =? > t? F < = S M F = d C = Q P Z K [ [ \ v A > A E T Q M M Q E < S = N Q C F <? F F < = > = g = > S C E d C C S Q M C

188 S M G H H z t? S F S C C d W R S F F W b F < =? N N = O O? M F F <? F S F g? C M Q F Q N = M F Q F < = D C C S C F? M F T Q R R S C C S Q M = > F Q > = C Q O y = F < S C? `? S M C F Z Q ` ` C S M F < =? W C = M E = Q P E > Q C C = x? R S M? F S Q M v r G V s I? E E = N F F < S C N Q S M F v ; < = > = S C M Q = x F > S M C S E R? F = > S? O F <? F C = F F O = C F < S C N d F = t? C d E < R? F = > S? O? C F < = > = S C t P? y Q d > C A > A E T Q M M Q E < S = v Z Q ` ` C? N N O S S M G H H z P Q > > = ` S C F >? F S Q M t? P? S O S M S F C = P P Q > F C W = E? d C = F < = = x S C F S M ` \ 9 ^ Y D ^ > = ` S C F >? F S Q M g? C? M Q W C F? E O = v ; < S C E Q M F = x F g Q d R? B = S F C d > N > S C S M ` S P M Q? N N > Q? E < g? C =? F F <? F F S R = S M G H H z W b Z Q ` ` C F Q A > J = > u Q ` v Q M Q F E Q M C = > S F g? C Q N = M F Q F < = T Q R R S C C S Q M = > F Q E Q M E O = Q M F < = N? N = > C F <? F A > Herzog s recollection was to be N > = P = > > v I F R d C F W = M Q F t < Q g = y = > t F <? F F < = > = S C C Q R = d M E = > F? S M F b? C F Q g < = F < = > F < S C S C g <? F F < = D C C S C F? M F T Q R R S C C S Q M = v I M F < = N > = E S M ` N? >? ` >? N < F < = > =? N N =? > C F Q W =? P S S M ` Q P P? E F F <? F A > McConnochie s version is? O C Q? E E = N F v ; < = N Q C S F S Q M S C d M E O =? > t W d F P Q > > =? C Q M C F Q W S C E d C C Q d W F S F R? F F = > C = S F < = > g? b v Q? E E = N F F < =? N N =? O N Q S M F t < Q g = y = > t F <? F S F g? C M Q F Q N = M Q M F < = d M F = C F = y = M E = F Q N > = P = > A > Herzog s view. r G s ; < = C = E Q P? E F d? O E <? O O = M ` = > = O? F = C F Q F < = > = O S? M E = N O? E Q M F < = G H H { = R? S O v ; < = D C C S C F? M F T Q R R S C C S Q M = > M Q F = C F < =? N N ellant s position was that F < = = R? S O Q P P = > g? C O S R S F F Q F < = 6 M S F \ F? F = C R? > B = F? F < = F < = M E d > > = M F F = R? > B? N N O S E? F S Q M v J Q g = y = > t F < = g? b F < = Assistant Commissioner s P? E F d? O E Q M E O d C S Q M S C g Q t N? > F S E d O? > O b F < = = R N <? C S C Q M F < = g Q C S M F < = N? > = M F < = C = C a ˆ $ Œ Š ƒ ª ƒ ˆ 8 Š ˆ Š N Q S M F C F Q? E Q M E O d C S Q M W b F < = D C C S C F? M F T Q R R S C C S Q M = > F <? F F < = = R? S O g = > S R N Q > F F <? M F < = 6 M S F \ F? F = C F = R? > B? N N O S E? F S Q M v r G s X = P Q > = R = F < = > = S S C N d F N N O S E? F S Q M F Q P S O = P d > F < = > = y = M E = Q M F < = N Q S M F v ; < =? N N = O O? M F g S C < = C F Q N d F S M F Q = y = M E = F < >? P F? ` > = = R = M F F <? F g? C? F F? E < F Q F < = G H H { = R? S O v I F S C C? F Q R? B = S F N O? S M F < = = R? S O > = O? F F Q F < = 6 M S F \ F? F = C F = R? > B? N N O S E? F S Q M v I F R S C C S Q M S C Q N N Q C Q M F < = W? C S C F <? F S F S C M Q F P > = C < Q = C M M b F < S M ` v : = O S? M E = S C F < = M N O? E Q M F < = g = O O B M Q g M > = O d E F? M E = Q P? N N =? O E Q d > F C F Q? E E = N F = y = M E = = x N? S M ` F < = > = E Q v I F S C C d W R S F F W b F < = > = C N Q = M F F <? F F < = > = g? C M Q E Q M P d C S Q M F < = T Q R R S C C S Q M = > g? C N O? S M O b? g? > = Q P F < =? N N = O O ant s N Q C S F S Q M S M > = O? F S Q M F Q F < = = R? S O t W d F > = = E F S F v I P F < =? N N = O O? M F F < Q d ` < F F < =

189 ? ` > = = R = M F C d N N Q > F S F C N Q C S F S Q M t S F C < Q d <? y = P S O S F? F F < = F S R = S M? E E Q M E = g S F < F < = > d O = C v J? y S M ` P? S O F Q C Q t F < =? N N = O O? M F R d C F O S y = g S F < S F = E S C S Q M v r G w s : = C Q O d F S Q M Q P F < S C N d F Q = C M Q F > = Ÿ d S > =? > = y S = g Q P? d F < Q > S F S = C v ; < = E Q M F = x F S C? P S S M ` Q P P? S F < t g < S E < > = R? S M C? C = > S Q d C? O O = `? F S Q M v ; < >? P F? ` > = = R = M F C < Q d <? y = W = = M S M E O S M F < = P S > C F N O? E = t W d F F < = > = E? M W = M Q N > = S E = F Q F < = > = C N Q = M F S M S F C S M E O d C S Q M M Q g v I F C F? C Q M S F C Q g Q = C M Q F M = E = C C S F? F =? M b P d > F < = > = y = M E = v I F S Q E d R = M F B M Q g M F Q F < = > = C N Q = M F v ; < = > = C N Q = M F C d W R S F C F <? F S R S F F S F g S O O M Q F? O F = > R? F F = > C v ; < S C S C M Q F t g S F < > = C N = E F t? E Q R N = O O S M ` W? C S C Q M g < S E < F Q Q N N Q C R S C C S Q M t? W C = M F Q F < = > E Q M E = > M C C d E <? C W > = M S M ` F < = S M Ÿ d S > b Q = O? b S M ` F < = < =? > S M ` v r G { s T Q M C = >? F S Q M R d C F? O g? b C W = ` S y = M F Q > = C N = E F S M `? C d N N Q > F S M ` F < = N > Q E d > = C S M N O? E = P Q > F < = S M S F S? O < =? > S M ` v ; Q Q > b? g S O O S M ` M = C C F Q? O O Q g P > = C < = y = M E = > d M C F < = > S C B Q P d = > R S M S M ` F < = S M S F S? O N > Q E = C C = C v X d F S F S C? E Q M C = >? F S Q M t M Q F? M? W C Q O d F = W? M t? < = > = N > Q N = > > = C Q O d F S Q M Q P g <? F S C? C = > S Q d C? O O = `? F S Q M = W b F < = > = C N Q = M F > = Ÿ d S > = C E Q M C = >? F S Q M Q P F < Q E d R = M F v ; < =? N N O S E? F S Q M F R S F F < = P d > F < = > = y = M E = S C? O O Q g v r c H s ; <? F C? t F < = R? F F = > E Q d W = > = C Q O y g S F < Q d F S F v I? R M Q F S M? ` > = = R = M F g S F < F < = g = S ` < F N O? E Q M F < = = R? S O S M F < = > d O S M ` d = >? N N =? O v ; < = D C C S C F? M F T Q R R S C C S Q M = > S M < = > P S S M ` C = R N <? C S C = C the use of W >? t? > = `? C S F? C R =? M S M ` F < = = R? S O E Q R R S F R = M F g? C g = > F <? M F < = 6 M S F \ F? F = C F = R? > B? N N O S E? F S Q M v J Q g = y = > t F < = C = M F = M E = M = M Q F W = > Q S M ` R Q > = F <? M C F? F S M ` F < = ; < = N? >? ` >? N < g < S E < N > = E = C F < = brand s intended focus in the United States. < S ` < O S ` < F N? >? ` >? N < = x N > = C C O b > = P = > C to the difficulty Zoggs S M F = O O = E F d? O N > Q N = > F b > = N > = C = M F? F S y = C g = > = <? y S M ` S M N > Q ` > = C C S M ` F < = E d > > = M F 6 M S F \ F? F = C? N N O S E? F S Q M v ; <? F C = F C F < = E Q M F = x F P Q > g <? F P Q O O Q g C v I F S C t I E Q M C = > t ` Q S M ` F Q Q P? > F Q d C = F < S C E Q R R d M S E? F S Q M t g < S E < S C g > S F F = M? C N? > F Q P C = = B S M ` F Q? E < S = y =? M? ` > = = R = M F F <? F g S O O N > Q ` > = C C F < = E d > > = M F 6 M S F \ F? F = C? N N O S E? F S Q M t? C d = > R S M S M ` F < = O = ` S F S R? E b Q P? C d W C = Ÿ d = M F 7 = g Z =? O? N N O S E? F S Q M v

190 R r c U s Y < = M Q M = O Q Q B C? F F < =? ` > = = R = M F S F C = O P t? y? M F? ` = M Q F? y? S O? W O = F Q F < = D C C S C F? M F T Q R R S C C S Q M = > t F < = > = E? M W = M Q d W F v I F S C? E Q = x S C F = M E =? ` > = = R = M F P Q > F < = 6 M S F \ F? F = C t? S C O S R S F F Q F <? F v I F = x N > = C C O = P S M = C S F C C E Q N =? C W = S M ` F < = 6 M S F \ F? F = C? C? b C M Q F < S M `? W Q d F? M b Q F < = > F = > > S F Q > b v A > : Q W W C Q d ` < F F Q N O? E = g = S ` < F Q M F < = N > =? R W O = g S F < S M F < >? P F? ` > = = R = M F g < S E = C E > S W = C Z Q ` ` C? C P Q E d C C S M ` Q M C g S R g =? > P Q > F < = C g S R R S M ` N Q Q O v J = M Q F = C F < = N > =? R W O Q = C M Q F O S R S F F < S C P Q E d C F Q F < = 6 M S F \ F? F = C? C d W R S F C F < S C Q R S C C S Q M C d N N Q > F C F < = D C C S C F? M F T Q R issioner s conclusion that the was not limited to the United States trade R? > B W d F > = N > = C = M F C F? F = R = M F Q P S F C S M F = W >? R? > B = F S M `? M b g < = > = v I E? M M Q F? E E = N F F <? F t? C S F C S R N O b S ` M Q > = C F < = = x N > = C C C E Q N = Q P F < =? ` > = = R = M F t? F < = N O? S M E Q M F = x F Q P F < = = R? S O g < S E < S C F < = 6 M S F \ F? F = C? N N O S E? F S Q M v r c G s ; < = > = S C? P d > F < = > > =? C Q M g < b F < = = R? S O S C S > > = O = y? M F v I F O F Q M Q F < S M ` v I F? M M = x N > Q N Q C ` > = = R = M F F <? F g? C M = y = > E Q M E O v A > J = > u Q M Q F? ` > = = v J M Q F g S F >? g < S C Q N N Q C S F S Q M v ; < = > = <? C C S R N O b W = = M M Q > = O S? M E = Q M S F W b < S R v D M Q P P = > = S M F < = E Q d > C = Q P M = ` Q F S? F S Q M C t? g < S E < g? C M = y = >? E E = N F t E? M M Q F W = < = F Q W = W S S M ` Q M Z Q ` ` C C Q? C F Q C d N N Q > F? P S S M ` Q P P? S F < P Q >? E F S M ` E Q M F >? > b F Q S F t = y = M S P S F F < = F S R = <? y = F < = g = >? R W S F E Q M F = P Q > v r c c s Y S F < Q d F F < = = R? S O Q P G H H { t O S F F O = S C O = P F v ; < = > = S C? > = P = > = M E = S M A > Herzog s = y = M E = F Q? y = > W? O E Q R R S F R = M F = W b? A > ] = Q [ = C F = F M = > W d F M = F? S O S C N > Q y M Q g = S ` < F E? M W =? F F? E < F Q S F v ; < = = y = M E = g? C F Q Q y? ` d = F Q > = Ÿ d S > =? > = C N Q M C = P > Q R Z Q ` ` C I M F = > M? F S Q M? O v r c z s L S M? O O b t F < = > = S C F < = Q > S ` S M? O? > >? M ` = R = M F S M D d C F >? O S? S M U { { G v A > J = > u Q Q = C M Q F S M < S C = y = M E = C? b F <? F F < S C g? C F Q <? y = d M O S R S F g Q > g = = P P = E F v ; < = > = S C M Q > =? C Q M F Q > < S C = y = M E =? C = C F? W O S C < S M `? M? ` > = = R = M F F <? F g = M F W = b Q F <? F D d C F >? O S? M? N N O S E? F S Q M v L d > F < = > t? O F < Q d ` < S F C = = R C F <? F A > J = > u Q ` g? C d M? g? > = Q P F < = C = y = O Q N R = M F C d M F S O C Q R = F S R = S M F < = G H H H C t Z Q ` ` C W = = M = x N? S M ` S M F < = S M F = > S R v I F <? C > = ` S C F >? F S Q M C P Q > Z K [ [ \ S M E O? C C = C {? G V S M M d R = > Q d C E Q d M F > S = C C S M E = F < = U { { H C v Z K [ [ \ ; K [ [ \ E O? C C G V > = ` S C F >? F S Q M C C = = R F Q > d M P > Q R F < = R F Q O? F = U { { H C t? Z K [ [ \ S M E O? C C G V C S M E = G H H V v ; < = > = S C M Q F < S M ` S M F < S C N? F F = > M F Q C d ` ` = C F F < = U { { G? > >? M ` = R = M F g = M F W = b Q D d C F >? O S? v

191 # r c V s ; < = = y = M E Q = C M Q F C d N N Q > F? E Q M E O d C S Q M F <? F F < = > = g? C? M b C Q > F Q P? > >? M ` = R = M F W = F g = = M F < = N? > F S = C Q P g < S E < F < = N > = C = M F? N N O S E? F S Q M R S ` < F W =? W > =? E < v I = t S F <? C W = = S P P S E d O F t S M R b y S = g t F Q? E F d? O O b = M F S P b = x? E F O b g <? F F < = P? S F < S C? O O = ` F Q W = v ; < = > d O S M ` d = >? N N =? Q = C M Q F E O =? > O b? > F S E d O? F = g <? F S F S C v A > : Q W W C? S F g? C? < S C F Q > b Q P C? b S M ` Q M = F < S M Q S M `? M Q F < = > v I M N? > F S E d O? > a C? b S M ` F <? F F < = > = g? C M Q S M F = > = C F S M F < = C d > P R? > B = F t b = F C = = B S M ` d M Ÿ d? O S P S > = ` S C F >? F S Q M C S M E O? C C G V? t R? > B = F S M ` C Q R = N > d E F C S M? g? b F <? F S C > = O = y? M F F Q F < = C d > P S M ` R? > B = F t C d E <? y = > F S C S M ` W Q? C < Q > F C = C N S F S C E O? S R S M ` C d E <? M S M F = > = C F v r c s I M R b y S = g t F < = = y = M E Q = C M Q F = C F? W O S C < F < = F b N = Q P? > >? M ` = R = M F M = W = F g = = M F < = N? > F S = C W = P Q > = S F E Q d R? B = F < = F = R? > B? N N O S E? F S Q M Q M = = S M P? S F < v D F R Q C F t F < = = y = M E = C < Q g C E Q R R d M S E? F S Q M C = W = F g = = M F < = N? > F S = C Q M g < S E < F < = > = <? C W = = M M Q > = O S? M E = t Q >? O F = >? F S Q M Q P N Q C S F S Q M t Q F < = > F <? M F < = Q > S ` S M? O U { { G > = ` S C F >? F S Q M v ; < = = y = M E = P? O O C g = O O C < Q > F Q P R? B S M ` ` Q Q M? M? O O = `? F S Q M Q P P? S F <? I? E E = N F A > 6 N F Q M QC s C d W R S C C S Q M F <? F S F C < Q d M Q F <? y = W = = M = v ; < = P? E F F <? F F < = P? S F < F = C F R? b W = C? F S C P S W b C Q R = F < S M ` O = C C F <? S C < Q M = C F b Z C < Q d M Q F R? C B F < = P? E F S F > = R? S M C? C = > S Q d C? O O = `? F S Q M t > = Ÿ d S > S M ` E O =? > = y = M E =? E? > = P d O? M? O b C S C v 6 O F S R? F = O b t F < = C F? Q P N > Q Q P S C F < = W? O? M E = Q P N > Q W? W S O S F S = C W d F I E Q M C = > F < = > = > = R? S M C y? O d = S M F < = g Q C Q P A > ; < Q > O = b f T t F < = D N N Q S M F _ = > C Q M t S M Y ² Å [ ³ Æ Å À ¼ ² À Á ² ¼  t \ g < = > = Q P? P? S F <? O O = `? F S Q M < = Q W C = > y a Œ ~ ƒ ˆ ˆ ƒ ~ ˆ Œ Œ } ƒ ˆ ~ ~ ƒ Ž Š Ž ˆ Š ~ Ž ~ ˆ ˆ ƒ Œ ~ ƒ ˆ Ž ˆ ~ ƒ ~ ˆ Œ Œ Œ Œ ƒ } ~ Ž Š «ˆ ƒ Œ ~ ~ Š Š ˆ ~ ˆ Ž Œ Œ ~ ˆ Ž Š } ˆ Œ Œ ƒ ˆ Š ˆ ƒ } ˆ r c s ; < =? N N =? O? `? S M C F F < = P S S M ` Q P P? S F < S C? O O Q g v q j n q j œ k š k k l š j m n q j q k q j k j k q m j k m o k l œ q k l š k q m j q j š k p š + 1 œ m m n r c w s I F S C E Q M y = M S = M F > = C C F < S C? C N = E F M = x F W = E? d C = S F P O Q g S > = E F O b P > Q R F < = N > = E S M S C E d C C S Q M v \ = E F S Q M c Q P F < = D E F N > Q y = C F <? F? N = > C Q M E O? S R S M ` F Q W = F < = Q g M = > Q P? R? > B R? b? N N O b F Q > = ` S C F = > S F v ; g Q Q P F < = F = R? > B S C C d = C F <? F E? M? > S C = d = > F < = E Q M E = N F Q P Q g M = > C < S N? > = a ] Î Ë ^ ÿ Ø Ò _ Õ Ð þ Î Ï Î Í Î Ò Ë ` Õ ÿ Ò Ï a Õ _ Õ b è é é î c æ d è ï ì b Ü Ý c ü e f Ò Î g Ï Ô ÿ Ë h Ò Õ Ò Ø ` ` Ë Ó Ð þ Ò Ë Ø è é é è d Ý è ì ã ï ü

192 ? g < = F < = > F < =? N N O S E? M F <? C? C d P P S E S = M F O = P S M S F = S M F = M F S Q M F Q d C = F < = R? > B S M F < = > = O = y? M F E O? C C Q P ` Q C? W g < = F < = > F < = > = S C? M b P >? Q > W > =? E < Q d F b S M y Q O y S M F < =? N N O S E? F S Q M v r c { s ; < = D C C S C F? M F T Q R R S C C S Q M = > P Q d `? S M C F Z Q ` ` C I M F = > M? F S Q M? O Q M W Q F < Q P F < = C = ` > Q d C v D P S S M ` Q P P >? g? C C? F Q P O Q S > = E F O b P > Q R F < = =? > O S = > E Q M E O d C S Q M Q P P? S F < v L Q > F < = > =? C Q M C? O > b ` S y = M t F < =? N N =? O? `? S M C F F <? F P S S M ` R d C F W = C S R S O? > O b? O O Q g v r z H s ; < = Q F < = > P S S M ` S C F <? F F < = > = g? C M = P S M S F = S M F = M F S Q M F Q d C = F < = R? > B v ; < = N > Q E = C C P Q > C d E <? E <? O O = M ` = S C F <? F? M S M F = M F S Q M F Q d C = S C N > = C d R P > Q R F < = P? E F Q P? N N O S E? F S Q M v J Q g = y = > t S P F < = Q N N Q M = M F E? M N Q S M F F Q = y = M E = F <? S C F d > W C F <? F N > = C d R N F S Q M t F < = M F < = Q M d C S C Q M F < =? N N O S E? M F F Q N > Q y =? M S M F = M F S Q M F Q d C = v ; < = = y = M E = C? F S C F d > W F < = N > = C d R N F S Q M g? C F < = G H H { = R? S O v I F g? C C d ` ` = C F W b F < =? N N = O O? M F C F <? F F < = D C C S C F? M F T Q R R S C C S Q M = > S M E Q > > = E F O b > = y = > C F < = Q M d C t W d F I do not accept that. On the opponent s reading Q P F < = = R? S O t? E E = N F W b F < = D C C S C F? M F T Q R R S C C S Q M = > t F < =? N N O S E? M F g? S C E O? S R S M `? M b S M F = M F S Q M F Q d C = F < = F = R? > B S M > = O? F S Q M F Q C Q R = Q P F < = ` Q C P Q > g < S E < S F C Q d ` < F > = ` S C F >? F S Q M v ; < = T Q R R S C C S Q M = > g? C F < = > = P Q > = E Q > > = E F Q M F < S C S M F = > N > = F? F S Q M F Q > = Ÿ d S > = F < =? N N O S E? M F F Q = C F? W O S C <? M S M F = M F S Q M F Q d C = v r z U s I F g? C P > Q R F < = P Q O O Q g S M ` N? C C? ` = S M F < = = R? S O F <? F F < = D C C S C F? M F T Q R R S C C S Q M = > E Q M E O F < = > = g? C M Q E O =? > = y = M E = Q P? M S M F = M F S Q M F Q d C = F < = Q N N Q C R? > B S M? O O F < = ` Q C < = > = R N <? C S C a ' Œ ~ ƒ ˆ ˆ ƒ ˆ Œ Ž ˆ Š ƒ ~ ƒ ˆ Š ˆ Œ Œ Š ~ Œ Œ % & Œ Œ ˆ Š Š Š ˆ } Š ˆ ƒ ~ ƒ ƒ ˆ Œ Œ Œ ƒ Ž Š Ž Œ ˆ Œ ƒ ˆ Ž ~ Œ ˆ Š ƒ Œ ƒ Œ Ž Š ƒ Œ Š ƒ ˆ ƒ ƒ Œ ˆ ƒ ˆ Š ˆ Š } ˆ Š ƒ ˆ Š Œ ˆ Œ Œ } Œ ~ ˆ Š Š ˆ Š Œ Š ˆ Š ; < = D C C S C F? M F T Q R R S C C S Q M = > < = F <? F F < =? N N O S E? M F C d E E = S M = C F? W O S C < S M `? M S M F = M F S Q M Q M O b? C > = `? C C g S R g =? >? C g S R E? N C v

193 r z G s I? E E ept the appellant s submission that the presumption in favour of an S M F = M F S Q M F Q d C = g? C M Q S C N O? E W b F < = G H H { = R? S O v L S > C F t P Q > > =? C Q M S C E d C C t S F > = O? F Q M O b F Q F < = 6 M S F \ F? F = C F = R? > B? N N O S E? F S Q M? M Q F F Q S M F = E F S y S F b S M 7 = g Z =? O? v \ = E Q t F < S C E d C C S Q M g S F < S M F < = = R? S O S C? W Q d F W >? S M `? F? > ` = F R? > B = F C t M Q F g <? F E O? C C G V N > d E F C g S O O W = N > d E C Q v ; < = = y = M E = W = P Q > = F < = D C C S C F? M F T Q R R S C C S Q M = > C < Q g F <? F Z Q ` ` C t d = > S F C Z Q ` ` C ; Q ` ` C O? W = O t? O > b N > d E R? M b Q P F < = E O? C C G V S F = R C v L Q > = x? R N O = t F < = N Q M = M F : S E B _ = > > b M Q F F < = E Q R N? M b = >? C < y = C F C t P O Q? F C d S F C t C d M N > Q F = E F S Q M C d S F C P Q > E < S > = M t? g = F C d S F C v I = t S M < S C = y = M E = A > J = > u Q ` E Q R N O? S M F <? F Z Q ` ` I d C F > S = C g? C R? > B = F S M ` W Q? C < Q > F C t g < S E < < = C? g = > = N O? S M O b? W =? E < g =? > S F = R v r z c s ; < = = y = M E = W = P Q > = F < = D C C S C F? M F T Q R R S C C S Q M = > t F < > Q d ` < A > A E T Q M M Q E < S = t g? C F <? F F < = Z Q ` ` C F = R? > B g? C S M F = F Q W = d C P Q > g <? F g? C E d > > = M F O b W = S M ` C Q d = > Z Q ` ` C ; Q ` ` C v \ Q? O F < Q d ` < F < = > = g? C M Q = y = M E = Q P F < = d C = Q P Z K [ [ \ S M E O? C C G V t F < = > = g? C > = O = y? M F = y = M E = Q P < Q g F < = M = g F = R? > B g Q d W = d C Q M g <? F v I = t A > J = > u Q ` = x < S W S F U? N N = C N < Q F Q ` >? N < C Q P Z Q ` ` C W = S M ` d C Q M W Q? C < Q > F C t g = F C d S F C t >? C < y = C F C t >? C < y = C F C C d > P t? <? F C v r z z s D E E Q S M ` O b t I E Q M E O = F < = D C C S C F? M F T Q R R S C C S Q M = > = > > S M < Q S M ` F <? F F < = = y = M E S C N O? E F < = N > = C d R N F S Q M t? = > > S M F < =? C C = C C R = M F Q P F < = = y = M E =? y? S O? W O = F Q C d N N Q > F? M S M F = M F S Q M F Q d C = v ; < = E Q M E O d C S Q M g? C W? C Q M? > S M ` Q P F < = = R? S O g < S E < S C t S M R b y S = g t M Q F E Q > > = E F v I F? O C Q `? y = F Q Q O S F F O = g = S ` < F F Q F < = = y = M E = F <? F F < = F = R? > B W = S M ` C Q d ` < F g? C F Q > = N O? E = Q M = W = S M ` d C Q M? >? M ` = Q P > = O = y? M F N > d E F C? F Q = y = M E = t C d N N Q > F W b W Q F < N? > F S = C t Q P F < Q C = N > d E F C N > = C = M F O b W = S M ` =? C Q v r z V s ; < =? N N =? O? `? S M C F F < = P S S M ` F <? F F < =? N N O S E? F S Q M P? S O C F < = > = Ÿ d S > = R = M F C Q P C c G Q P F < = D E F S C? O O Q g v q j n q j œ k š k š m q j œ l œ q k l š k q m j m o n q i k m n p q j m l p š o p m j o q m j r z s Z Q ` ` C I M F = > M? F S Q M? O P S M? O O b? N N =? O C F < = E Q M E O d C S Q M F <? F S F C? N N O S E? F S Q M W = > = = E F W = E? d C = t E Q M F >? > b F Q C U U? Q P F < = D E F t F < = d C = Q P S F C R? > B g Q d W = O S B = O b F = E = S y = Q > E? d C = E Q M P d C S Q M v

194 r z s ; < = Q N N Q M = M F t \ = x g? x I M E Q > N Q >? F t > = O S Q M C S x d M > = ` S C F = > R? > B C a? F < = O Q ` Q C = F Q d F? W Q y =? F r G s W A : Z K [ \ \ 9 ^ Y D ^ E Z K [ \ \ 9 ^ Y D A : Z K [ = Z K [ \ P Z K [ v ² k À ± ³ ¹ ³ À ¼ ² Ä Ä ² Å r z w s ; < = D C C S C F? M F T Q R R S C C S Q M = > E Q M E O F < = > = O = y? M F R? > B = F P Q > F < =? N N O S E? F S Q M g? C F < = ` = M = >? O N d > E <? C S M ` N d W O S E Q P 7 = g Z =? O? M b Q F < = > C S M y Q O y S M F < Q C = N d > E <? C = C C d E <? C > = F? S O = > C v ; < = > = O = y? M F R? > B = F g? = C E > S W C being very large in size and not a specialist market. r z { s ; < = M = x F > = Ÿ d S > C F = N S C F Q? C C = C C S P F < = Q N N Q M = M F <? C = C F? W O S C < M? g? > = M = C C Q P S F C R? > B S M F < = > = O = y? M F R? > B = F v ; < S C g? C M Q F t W? C Q M l µ ± ² ¹ ¼ ² ² Ç Ç t F Q W =? O Q g F < > = C < Q v m ; < = D C C S C F? M F T Q R R S C C S Q M = > P Q d C d P P S E S = M F? g? > = M = C C S M F < = O Q ` Q R? > B t W d F M Q M = Q P F < = P S y = Q F < = > C v ; < = Q N N Q M = M F > = C N Q = M F <? C M Q F? N N =? O F <? F? C N = E F Q P F < = E S C S Q M C Q F < = P Q E d C P > Q R < = > = S C Q M O b Q M F < =? g? > = M = C C Q P F < = O Q ` Q R? > B? R Q M ` C F F < = ` = M = >? O N d > E <? C S M ` N d W O S E Q P 7 = g Z =? O? v ; < = P? E F Q > C F <? F S M P Q > R F < = Assistant Commissioner s reasons P Q > E Q M E O S M ` F <? F? > = N d F? F S Q M W = = M = C F? W O S C < S M F < = O Q ` = y S E = g = > = a? F < = = C F? W O S C < < S C F Q > b Q P \ = x Y? x C? O = C S M 7 = g Z =? O? t? F <? F S F S C C Q S M C F Q > = C C d E <? C X S O O? W Q M ` t f d S E B C S O y = > t : n : \ N Q > F t : S N T d > O? D R? u Q M o Ê Ñ Ì Í Î Õ Ø Î Ò p Î ` ` Ò Ø Î ÿ Ï Ò Í q Î Ï Ð r Ø ÿ Õ ÿ Ó Ö s Í Ë Ø ÿ ` Î Ï Ò p Î ` ` Ò t r Ø Î Ï Ó u v Ï ` Ò Ø q Ò Ø Î Õ Ë è é ï é ñ w Ý Þ è ì ð b è é ï é c í æ d è é b Ý Þ c ã ï ê ü

195 W the advertising in surf oriented magazines in the 1980 s and 1990 s, C Q R = Q P g < S E < g = > = E S > E d O? F S M 7 = g Z =? O? E F < = > = P = > = M E = F Q F < = g? x S M ` = M = >? O R? `? u S M = C? P S O R C v r V H s ; <? F = C F? W O S C < t F < = D C C S C F? M F T Q R R S C C S Q M = > F < = M d = > F Q Q B? E Q R N? > S C Q M Q P F < = R? > B C v ; < = b g = > = < = F Q W = y S C d? O O b? d >? O O S C C S R S O? > t W d F? C <? y S M `? C F > Q M ` E Q M E = N F d? O C S R S O? > S F b v ; < S C g? C W = E? d C = Q P F < = E = M F >? O S F b Q P Z Q ` t? = d N g Q t S M F < = E Q R N = F S M ` R? > B C v It was noted that the logo used the name Mr Zogs, g < S E < S C d M d C d? O? S C O S B = O b F Q C = F S M F < = R S Q P F < = > = O = y? M F R? > B = F v D M S R N = > P = E F > = E Q O O = E F S Q M R? b g = O O F < = M > = `? Z Q ` ` C? C O S M B v r V U s D `? S M C F F <? F W? E B ` > Q d t F < = D C C S C F? M F T Q R R S C C S Q M = >? C C = C C F < = O S B = O S < Q Q P E Q M P d C S Q M t? O O Q g S M ` P Q > < Q g F < =? N N O S E? M F R? > B R S ` < F P? S > O b W = d C S M F < = P d F d > = v Y < S O C F C d > P W Q? g? x? E O? C C G V ` Q C g = > = M Q F C S R S O? > t N d > E <? C = > C Q P g? x g = > =? O C Q O S B = O b F Q N d > E <? C = R? M b Q P F < = S F = R C O S C F S M E O? C C G V v I F g? C? O C Q? P? S > d C = F Q = M y S C? ` = Z Q ` ` C ` Q C W = S M ` C Q S M C d > P Q > S = M F C < Q N C v _ = > C Q M C S M F < = C d > P S M ` S d C F > b P? R S O S? > g S F < F < = O Q ` Q R S ` < F W = E? d C F Q g Q = > S P Z Q ` ` C S C? M = g E O Q F < S M ` O S M = Q P \ = x g? x I M E Q > N Q >? F v D E E Q S M ` O b t F < = Q N N Q C S F S Q M g? C d N < = v µ ± Æ Æ ³ ³ ² Ä Ä ² Å r V G s ; < =? N N = O O? M F P S > C F E <? O O = M ` = C F < = P S S M ` F <? F F < = Q N N Q M = M F C d P P S E S = M F? g? > = M = C C S M F < = > = O = y? M F R? > B = F v ; < = opponent s mark is only known in a small C N = E S? O S C F? > =? Q P g <? F S C? O? > ` = > = O = y? M F R? > B = F v L d > F < = > t F < = > = N d F? F S Q M S C S M C d > P W Q? g? x t? N > d E F F <? F S C M Q F S F C = O P N? > F Q P F < = > = O = y? M F R? > B = F v I F S C M Q F F <? F g < = > = F < = O Q ` Q S C d C Q M > = O = y? M F ` Q C C d E <? C F C < S > F C t F < = \ 9 ^ Y D ^ E Q M E = N F S C always prominent, thereby highlighting the product s link F Q F < = C d > P W Q? g? x v D E E Q S M ` O b t S F S C C d W R S F F t S P F < = > = S C? 7 = g Z =? O? > = N d F? F S Q M S M F < = \ 9 ^ Y D ^ O Q ` Q t S F = x S C F C Q M O b S M F < = C N = E S? O S C F C d > P S M ` R? > B = F v r V c s D > = O? F C d W R S C C S Q M S C F <? F S F S C S M E Q > > = E F t g S F < S M 7 = g Z =? O? t F Q N O? E = = R N <? C S C Q M d C F F < = Z Q ` C Q > A > Z Q ` C N? > F Q P? E Q R N O = x O Q ` Q v ; < = > = S C M Q = y = M E = Q P? C = N? >? F = > = N d F? F S Q M S M 7 = g Z =? O? P Q > Z Q ` C t? O R Q C F? O O > = P = > = M E = C F Q F <? F C F? S M `? O Q M =? > = Q y = > C =? C W? C v ; < = > = C N Q = M F < Q C M Q 7 = g Z =? O?

196 > = ` S C F >? F S Q M C t <? C M Q F E? > > S Q d F? M b 7 = g Z =? O? C N = E S P S E R? > B = F S M `? <? C O M Q = y = M E = Q P 7 = g Z =? O? P Q E d C y = > F S C S M ` v D O O F <? F E? M W = N Q S M F F Q? > = F < = d C d? O > = P = > = M E = C F Q? N > d E F Q M = P S C S M? M b > = F? S O E? F? O Q ` d = Q > C < Q S C N O? b v I F S C C d W R S F F F <? F g < = > = F < = > =? > = > = P = > = M E = C F Q F < = N > d E F C t F < = \ = x Y? x E Q M E = N Q R S M? F = C v L d > F < = > t F < = > = S C M Q E Q M C d R = > = y = M E = F Q C? b F <? F Z Q ` C S C > = E Q ` M S C S M 7 = g Z =? O? W b? M b Q M =? C? F = R? > B v r V z s ; d > M S M ` F Q F < = E Q R N? > S C Q M Q P F < = R? > B C t F < =? N N = O O? M F C d W R S F C F <? F F < = O? C F S M ` S R N > = C C S Q M S C M Q F S M F < = M? R = Q P Z Q ` C W d F Q P F < = \ = x Y? x E Q R N Q M = M F v I F S C g <? F S C C F > S B S M ` t F < = R Q > = C Q ` S y = M S F > = O? F = C t d M = x N = E F O b t F Q C d > P W Q? C v I F g? C? O? W = O F <? F g? = C S ` M F Q W = P d M M b? N > Q y Q E? F S y = S P P = > = M F P > Q R? M b F < S M ` = O C = S M F < = C d > P R? > B = F v 9 P P = E F S y = O b F < =? N N = O O? M F C d W R S F C F < = Q N N Q M = M F C d E E = S M S F C? S R t? F < = D C C S C F? M F T Q R R S C C S Q M = > g? C g > Q M ` F Q P Q E d C Q M F < = Z Q ` C E Q R N Q M = M F v r V V s L S M? O O b t S F S C M Q F F <? F Z Q ` ` C <? C W = = M S M F < = 7 = g Z =? O? R? > B = F C S M E = U { { V? F < = > = C N Q = M F O M Q = y = M E = Q P E Q M P d C S Q M S M F <? F F S R = v I F S C C d W R S F F F < S C S C F Q W = = x N = E F ` S y = M F < = P? E F Q > C? O > b F >? y = > C v D E E Q S M ` O b t S F g? C S M E Q > > = E F F Q E Q M E O = F < = > = g? C? M b O S B = O S < Q Q P E Q M P d C S Q M C < Q d > = ` S C F >? F S Q M W =? O O Q g v r V s ; < = > = C N Q = M F W = ` S M C g S F < F g Q ` = M = >? O N Q S M F C v ; < = P S > C F S C F Q = R N <? C S C = F < = M = F Q E Q M C = >? M b N Q C C S W O = P? S > d C = F <? F R S ` < F W = = Q P F < = applicant s F = R? > B v ; < = ` Q C E Q y = > W b E O? C C G V t? S = F < = ` Q C P Q > g < S E < Z Q ` ` C? > = W = C F B M Q g M t E Q d O = ` S F S R? F = O b W = C Q F < > Q d ` < > = F? S O C F Q > = C? S R F F < = C d > P S M ` R? > B = F v ; < S C O = C C = M C F < = C S ` M S P S E? M E = Q P Z Q ` ` C E d > > = M F R? > B = F S M ` g < S E < S C F < > Q d ` < C < Q N C? C C Q E S? F g S F <? Ÿ d? F S E E = M F > = C v r V s ; < = C = E Q ` = M = >? O C d W R S C C S Q M S C F <? F F < =? N N = O O? M F N? b C S M C d P P S E S = M F? F F = M F S Q M F Q F < = > = O = y? M F = v L Q > = x? R N O = t S F S C M Q F F <? F F < = E O? S R Q P U t H H H S F = R C C Q E Q y = > C? N = > S = S M ` S M L = W > d? > b G H U U t g < = > =? C F < = > = O = y? M F = S C { 8 = E = R W = > G H H { v ] S B = g S C = t S F S C C d W R S F F F < = > = S C? O? E B Q P E O? > S F b S M F < = = y = M E =? W Q d F g <? F <? C W = = M C Q d = > Z K [ [ \ t? g <? F <? C W = = M R? > B = F d = > Z Q ` ` C ; Q ` ` C v

197 r V w s ; d > M S M ` F Q F < = C N = E S P S E N Q S M F C t S F S C C d W R S F F F < = D C C S C F? M F T Q R R S C C S Q M = > g? C E Q > > = E F F Q P Q E d C Q M F < Q R S M? M F S R N? E F Q P Z Q ` C v I F S C? = d N < S ` < O b d M d C d? O M? R = t? S C? M S M F = ` >? O N > Q R S M = M F N? > F Q P F < = O Q ` Q v : = P = > = M E = S C = F Q A > Herzog s evidence that the wax is often referred to as a bar of Zogs. T Q M E = > M S M ` > = N d F? F S Q M S M F < = > = O = y? M F R? > B = F t > = O S? M E = S C N O? E t C Q R = g <? F P? S M F O b t Q M? C N S O O Q y = > > = N d F? F S Q M v ; < S C S C C? F Q P O Q g P > Q R F < = S M F = > M? F S Q M? O M? F d > = Q P C d > P S M ` t? F < = N > Q R S M = M E = Q P F < = F g Q Q > F < > = = R Q y S = C F <? F P =? F d > F < = \ = x Y? x v r V { s The respondent s N > S R? > b? > ` d R = M F t g < S E < S C M Q F g =? B = > P Q > S F C E Q M E S C = M = C C t S C F <? F Z Q ` S C? g = O O B M Q g M M? R = S M C d > P S M ` E S > E O = C v ; < =? N N O S E? M F C ` Q C? > = = Ÿ d? O O b E? N? W O = Q P W = S M ` C Q S M C d > P S M ` P Q E d C C C F Q > = C t? N = Q N O = P? R S O S? > g S F < Z Q ` C? A > Z Q ` C? > = O S B = O b F Q W = E? d C F Q g Q = > t Q M C = = S M ` Z K [ [ \ t S P < = <? C = x F = S M F Q? M = g N > d E F >? M ` = v ; <? F S C C d P P S E S = M F F Q R = = F F < = F = C F Q P E Q M P d C S Q M t? F < = D C C S C F? M F T ommissioner s decision should, therefore, be upheld. Ç» Ç Æ Æ ³ r H s ; < = D C C S C F? M F T Q R R S C C S Q M = > E Q M E O F <? F Q P F < = C S x R? > B C > = O S Q M W b F < = > = C N Q = M F t F < = Q M O b Q M = S M g < S E <? > = N d F? F S Q M = x S C F S M F < = 7 = g Z =? O? R? > B = F g? C F < = E Q R N O = x O Q ` Q v I E Q M C = > F < S = E S C S Q M t g < S E < <? C M Q F W = = M E <? O O = M ` W b F < = > = C N Q = M F t S C C S ` M S P S E? M F W = E? d C = S F R =? M C F <? F M Q S = N = = M F > = N d F? F S Q M g? C found to exist in Zog s, Mr Zog s, Mr Zog, Zog s Sex WAX, or Mr Zog s Sexwax. r U s : d E C Q O = O b F Q? M S C C d = Q P g < = F < = > F < = > = ` S C F >? F S Q M Q P Z K [ [ \ S C O S B = O b F Q E? d C = E Q M P d C S Q M W = E? d C = Q P? M? g? > = M = C C S M F < = 7 = g Z =? O? W d b S M ` N d W O S E Q P F < = E Q R N O = x O Q ` Q t I E Q M C = > F < =? M C g = > R d C F W = M Q v L S > C F? Q W y S Q d C O b F < = b? > = Ÿ d S F S C C S R S O? > v K M = S C? C S M ` O = W O Q E B g Q F < = Q F < = >? E Q R N O = x E S > E d O? = y S E = v \ = E Q = O S W = >? F = O b C Q t F < = N > Q R S M? M F P =? F d > = Q P F < = O Q ` Q S C F < = E = M F >? O \ = x Y? x W? v ; < S = O S W = >? F = O b C Q t F < = E Q M E = N F Q P \ = x Y? x S C? F F = M F S Q M ` >? W W S M ` v A > J = > u Q ` C? b C S F S C d M S Ÿ d = t? g? C S M F = F Q W = N > Q y Q E? F S y = t P d M M b? y = > S P P = > = M F v I P F < = > = S C? C S M ` O = P =? F d > = Q P F < = O Q ` Q g < S E < g Q d O S M ` = > g S F < N = Q N O = t S F S C F < S C C = x g? x? C N = E F v

198 r G s ; Q C? b R Q > = g Q d W = d C F F Q > = N =? F R b = C C = M F S? O E Q M E O d C S Q M t g < S E < S C F <? F F < = F g Q R? > B C? > = C S P P = > = M F t M Q > S C B Q P E Q M P d C S Q M = x S C F C v Y < = > = = N? > F P > Q R F < = > d O S M ` d = >? N N =? O S C Q M F < = = R N <? C S C ` S y = M F Q F < = A > Zog s E Q R N Q M = M F Q P F < = E Q R N O = x O Q ` Q v S C? ` > = = P Q > F g Q > =? C Q M C Q M Q F E Q M C = > S C Q O? F S M ` F <? F P =? F d > = S C E Q M C S C F = M F g S F < F < = =? > O S = > E Q M E O d C S Q M F <? F M Q > = N d F? F S Q M = x S C F S M? M b Q P F < Q C = S S y d? O E Q M E = N F C? Q M Q F E Q M C = > S F S C? N > Q R S M = M F P =? F d > = Q P F < = O Q ` Q v r c s ; <? F S C = M Q d ` < F S C N Q C = Q P F < =? N N =? O S M P? y Q d > Q P F < =? N N = O O? M F t W d F P Q > E Q R N O = F = M = C C I W > S = P > = C C F < = E <? O O = M ` = F Q F < = P S S M ` Q P > = N d F? F S Q M v I E Q M C = > that aspect finely balanced but again I prefer the appellant s position. r z s L S > C F t F < = = y = M E M Q F d C F S P b? P S S M ` Q P C N S O O Q y = > > = N d F? F S Q M P > Q R Q y = > C =? C v ; < = ` = M = >? O R? `? u S M = C > = O S d N Q M S M y Q O y P S y = S C Q O? F > = P = > = M E = C t P Q d > Q P g < S E < Q E E d > > R Q > = F <? M F = M b =? > C W = P Q > = F < = > = O = y? M F = v ; < = R Q y S = C? > F L? C F ; S R = C? F : ` = R Q M F J S ` < U { w G? _ Q S M F X > =? B U { { U v x ; < = ; = O = y S C S Q M C < Q g C? N N =? > F Q S M y Q O y = S C Q O? F = N S C = C Q M C < Q g C E Q M E = > M S M ` g < S E < M Q y S = g S M ` P S ` d > = C? > = N > Q y t? g < S E <? M b g? b? > = C N Q S E v 7 Q M = Q P F < S C d C F S P S = C? E Q M E O d C S Q M F <? F F < = G H H { ` = M = >? O W d b S M ` N d W O S E Q P 7 = g Z =? O? g Q d <? y =? g? > = M = C C Q P F < = O Q ` Q v r V s 7 = x F t F < = > = <? C W = = M M Q? E F d? y = > F S C S M ` S M 7 = g Z =? O? v ; < = > =? > = > = P = > = M E = C F Q F < = N > d E F C W = S M ` O S C F S M > = F? S O E? F? O Q ` d = C t W d F F <? F S C S F v y ; < = > = C = = R S M ` O b <? C W = = M F < N > Q R Q F S Q M W d F F < = > =? O S F b S C F <? F F < = N > d E F <? C C Q S F C = O P v ; < S C S C W = E? d C = S F S C Q P d Q d W F Ÿ d? O S F b t? S C N Q C C S W O b = y = M S E Q M S E t g S F < S M F < = y = > b C N = E S? O S C R? > B = F S M g < S E < S F = x S C F C v I F S C P Q > F < S C > =? C Q M F <? F I? O C Q E Q M C = > F < = Q y = > C =? y = > F S C S M ` S M C N = E S? O S C F R? `? u S M = Q = C M Q y? M E = R? F F = > C v D O R Q C F? O O F < = 7 = g Z =? O? > = > C Q P F < Q C = N d W O S E? F S Q M C g S O O B M Q g Q P F < = N > d E F? M b g? b t Q > C Q Q M g Q d S P F < = b > = R? S M S M F = > = C F S M C d > P S M ` v z æ ä { å ô õ ò ä Ü { } ð ã ú ò õ ô ø ò { ä ð Ú ô ã ä d ô ä ä ù ò ô ã ~ Zog s sex wax t ë ú } { ü æ ä d ò { ä ô ã á ã ò ä ô ø ò { ä } ô ô ù ã ú ã à â ò ú ô ß ø ò ã ö ã ò ú ô ù ã ü Þ å ô ø ò ä ô ä à â ã { õ ô å } ã } ô ô ù ã ú ä ô ù ú ø ã ø ô ã å ó ô { ú { ä ð ö ß ò ä ã ä ã â ƒ ú { ú } { ú ø ò ó ô å ò ö ô å { ú ã ø ø ò { ä { ä â ƒ à ã ô â ô ú ú { ä { ú ã à à ß ã à ƒ ð ã ø ò { ä æ ã å å ô ú ú ô å ã } ô } ô ã { ä ã ä å õ ô ä { ò ä ã ã { ä ò ä â ƒ ò ò õ ã â â ƒ ä ò ô } ã æ } ã ó ô ä ò { ä ò ô å } ô ô ó { å ô ä à ô ð ö ß ã } ô ô ô à ô å { ü

199 R r s ; < S C O C F Q F < = Ÿ d = C F S Q M Q P g < = F < = >? g? > = M = C C Q P F < = O Q ` Q S M F < = C d > P S M ` E Q R R d M S F b S C = M Q d ` < F Q R = = F F < = O Q g F < > = C < Q v I M F < S C E? C = S F S C P? S > F Q C? b F <? F R Q C F t S P M Q F? O O Q P F < Q C = t S M F < = C d > P S M ` E Q R R d M S F b g S O O? O C Q W = N? > F Q P F < = > = O = y? M F? > B = F g < S E < S C F < = C g S R g =? > W d b S M ` N d W O S E Q P 7 = g Z =? O? v I M µ ± ² ¹ ¼ ² ² Ç Ç F < = T Q d > F = M F S P S F < = P Q O O Q g S M `? C F < = > = O = y? M F? N N > Q? E < a ˆ Ž Ž ƒ ˆ ƒ ~ ~ Š Œ «ˆ ˆ ƒ ˆ Š ˆ ~ ˆ «ƒ Š ˆ ˆ ƒ Ž ƒ ˆ «ˆ ƒ } ˆ Œ ƒ Œ Œ ƒ ~ ƒ ˆ Š Ž ˆ Š Œ ƒ Œ ƒ Š ˆ «ˆ Š ˆ ƒ ˆ Œ Œ } ƒ Œ ƒ } ˆ Š ƒ ~ ˆ ˆ Œ Š 7 Œ Œ Œ ƒ ~ ƒ ˆ Š Ž ˆ Š Œ ƒ Œ ˆ Ž ˆ ƒ Œ ƒ ˆ ƒ Š ˆ ƒ Œ 3 ˆ ˆ Š ˆ ƒ Œ Š ˆ ~ «ˆ ˆ ƒ ˆ Š Ž ˆ Š Œ ƒ Œ ƒ «~ «ˆ ƒ ƒ ˆ Š Ž } ƒ market... (authorities omitted) r s ; < = > = S C M Q = y = M E = < Q g W S ` F < S C C N = E S? O S C F ` > Q d N S C v A b C = M C = S C F <? F Q M = g Q d C? b F < = C d > P S M ` R? > B = F S C M Q F S M C S ` M S P S E? M F S M S F C = O P t W d F > = O? F S y = F Q F < S C y = > b O? > ` = R? > B = F S M S C C d = < = > = t S F S Q d W F P d O S F R = = F C F < = O Q g F < > = C < Q v ; < = > = S C t? C I <? y = Q W C = > y t M Q = y = M E = Q M F < = N Q S M F? Q M Q F E Q M C = > S F S C C Q Q W y S Q d C? C F Q R? B = F < = E S C S Q M C F >? S ` < F P Q > g? v X? C Q M F < = E Q M E O d C S Q M F <? F? M b > = N d F? F S Q M S M F < = O Q ` Q S C O S R S F C Q O = O b F Q F < = C N = E S? O S C F C d > P S M ` R? > B = F t I E Q M E O = Q M W? O? M E = F <? F S C M Q F = M Q d ` < F Q = C F? W O S C <? g? > = M = C C Q P F < = W >? S M F < = > = O = y? M F R? > B = F v m j p o q m j r w s I? R C? F S C P S Q M F < = = y = M E = F < =? N N O S E? M F = C F? W O S C < F <? F F < = > = g? C M Q O S B = O S < Q Q P E Q M P d C S Q M with the opponent s mark S P > = ` S C F >? F S Q M g = > =? O O Q g v ; < S C S C W = E? d C = F < = Q M O b R? > B Q P F < = Q N N Q M = M F g < S E < C d P P S E S = M F > = N d F? F S Q M S C Ÿ d S F S P P = > = M F P > Q R F < = F = R? > B W = S M ` C Q d ` < F v Y S F < O = C C E Q M y S E F S Q M t W d F Q M W? O? M E = t I g Q d O C Q <? y =? O O Q g F < =? N N =? O? `? S M C F F < = P S S M ` Q P? C d P P S E S = M F > = N d F? F S Q M v r { s ; < = > d O S M ` d = >? N N =? O P Q d F g Q Q F < = > S R N S R = M F C F Q F < = > = ` S C F >? F S Q M P? S F < t? O? E B Q = R Q M C F >? F S M F = M F S Q M F Q d C = F < = R? > B C v L Q > F < = > =? C Q M C ` S y = M t S C? ` > = = g S F < W Q F < E Q M E O d C S Q M C? C Q? O O Q g F < =? N N =? O v ; < =? N N O S E? M F g? C = M F S F O F Q > = ` S C F >? F S Q M Q P S F C F = R? > B v Ê Ñ Ì Í Î Õ Ø Î Ò p Î ` ` Ò Ø Î ÿ Ï Ò Í q Î Ï Ð r Ø ÿ Õ ÿ Ó Ö s Í Ë Ø ÿ ` Î Ï Ò p Î ` ` Ò t r Ø Î Ï Ó u v Ï ` Ò Ø q Ò Ø Î Õ Ë ð ã ö ò ó ô ä î ü

200 r H s ; < =? N N = O O? M F S C = M F S F O F Q E Q C F C v I P? ` > = = R = M F E? M M Q F W = > =? E < t R = R Q >? R? b W = P S O v Ú ò â { à { ò ú ˆ û Š ø ò ä Ý ð ô â â { ä ò ä ã â å ù { ä ú Û ã ù Û { õ { ô å ð ô â â { ä ò ä Þ û d ã á Û ã ù ð ô â â { ä ò ä \ S R Q M L >? M E = e

201 IN THE MATTER of the Trade Marks Act 2002 AND IN THE MATTER of New Zealand Trade Mark Registration No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in class 25 in the name of The Chartered Institute Of Management Accountants AND IN THE MATTER of an opposition by New Zealand Institute Of Chartered Accountants Submissions Of Counsel For The Applicant On Refusal Of Request For Cross Examination Of Deponent 23 June 2014

202 Introduction 1. The Applicant seeks permission under section 160(2)(b) of the Act, to crossexamine a deponent on his declaration. 2. More specifically, the Applicant seeks to cross-examine Richard Brandon Moon in relation to the following aspects of his evidence: 2.1 The Applicant may ask the Commissioner to draw an adverse inference from the response of the Opponent to the Commissioner s request for production of further documents, including in particular the process followed by Mr Moon in his attempt to locate the requested document; 2.2 Mr Moon makes a number of factual assertions which are unsubstantiated by any documentary or other supporting material; 2.3 Mr Moon makes a number of factual assertions which contradict the Applicant s evidence; 2.4 Mr Moon makes statements regarding matters which are, or appear on the face of his evidence to be, outside the scope of his experience or expertise. Cross examination of deponents before the Commissioner Unfettered discretion to allow cross-examination 3. Cross-examination of deponents is expressly provided for in section 160 of the Trade Marks Act 2002 ( the Act ) which reads as follows: 160 Mode of giving evidence in proceedings before Commissioner (1) Subject to any regulations, in any proceeding under this Act before the Commissioner, the evidence must be given by affidavit or statutory declaration in the absence of directions to the contrary. (2) However, despite subsection (1), the Commissioner may- (a) Take oral evidence instead of, or in addition to, evidence by affidavit or declaration; or Submissions of Owner (Cross examination) (2).docx 2

203 (b) Permit a deponent or declarant to be cross-examined on his or her affidavit or declaration. 4. It is clear from the wording of the section, that, while evidence will commonly be in affidavit/declaration form, the Commissioner is nonetheless granted what is expressed as an unfettered discretion to permit crossexamination. Applying a strict literal interpretation to the words of the statute, the requirement that evidence shall be given by affidavit or statutory declaration, is subject to any directions that the Commissioner may make to the contrary. The evidence will only be in written form if there are no directions ordering otherwise. 5. The forms of direction that may be made are those dealt with in sub paragraph (2), which include directions regarding cross-examination, and any other forms of direction that might be made under the Trade Marks Regulations 2003 ( the Regulations ). 6. As stated above, the Commissioner s discretion to make such directions is unfettered in the sense that the Act provides for no limitations upon the manner in which, or reasons for which, the discretion may be exercised. That is not to say, that it can be exercised without some principled basis for doing so, but likewise, any test/s that is/are applied must be adopted on a reasonable, justifiable and rational basis. 7. Furthermore, whatever basis is adopted cannot be such as to place limits upon the exercise that are not required by or apparent from the Act. Setting too high a threshold will defeat the intention of the legislature to allow the discretion in the first place. 8. It is useful to look at the position under the High Court Rules. Under the Rules a clear distinction is drawn between the right to cross-examine a deponent in relation to evidence filed in relation to interlocutory applications, and those who filed evidence in relation to a substantive proceeding. In the case of the former, the Judge may order attendance for cross-examination Submissions of Owner (Cross examination) (2).docx 3

204 only in exceptional circumstances 1. available as of right 2. In the latter, cross-examination is 9. The applicant acknowledges that the High Court Rules do not strictly apply to proceedings before the Commissioner of Trade Marks. They do however determine an analogous position and reflect the principles of natural justice in that a party, in substantive proceedings at least, is allowed the opportunity to present its case as it best sees fit. The shortcomings of written evidence are also recognised by allowing as of right the opportunity to test the veracity of that evidence before a substantive ruling will be made. 10. Notably, trade mark opposition proceedings are substantive proceedings. The Applicant says that it would be wrong to set a high threshold for the granting of leave for a party to cross-examine a deponent, where this could lead to a substantive decision being made on the basis of untested evidence, at least where the request for cross-examination is not spurious. Appropriate considerations in exercising the discretion 11. The Applicant accepts that cross-examination is not a standard occurrence in trade mark proceedings before the Commissioner. The scheme of the Act and the Regulations provides for challenges to registration to be dealt with in proceedings that are both just and expeditious. 12. In the majority of cases proceedings that will entail the consideration of documentary evidence supported by submissions from the parties involved. That said, the following points are evident: 12.1 The scheme of the Act and Regulations is permissive in regard to ensuring that all parties have every reasonable opportunity to present their case as best as possible; 1 HCR HCR 9.74 Submissions of Owner (Cross examination) (2).docx 4

205 12.2 The public interest in ensuring that the register accurately reflects the true position with regard to the ownership of trade mark rights is paramount. In that regard it is equally as important for valid trade marks to be on the Register as it is for invalid trade marks to be denied registration or declared invalid. 13. While no doubt more expeditious (than dealing with oral evidence), conducting proceedings on the basis of written and/or documentary evidence does have some shortcomings, including: 13.1 Assessments of credibility are often difficult to make, even where contradictory evidence is available; 13.2 The nuances of language such as emphasis are lost when the evidence is in written form and furthermore the writer is unable to make an assessment as to how the written words have been understood; 13.3 A deponent can too easily omit details, whether intentionally or not, and thus convey a misleading or confusing message; 13.4 It is unfair to draw any adverse inference in submissions, from any aspect of the evidence filed, whether a statement or an omission, where the deponent has not been given fair opportunity to respond to that suggestion; 13.5 There is little or no opportunity for additional explanation or embellishment to assist with clarification or understanding of what has been presented. 14. All of the above points must therefore form part of the list of considerations made by the Commissioner when exercising the s160 discretion. 15. It is also important to consider that the only discernible reasons for not allowing cross-examination are the additional time and facilities required to deal with viva voce evidence. The Applicant says that both justice and public Submissions of Owner (Cross examination) (2).docx 5

206 interest will dictate that these reasons are outweighed where any of the points listed above are relevantly raised. The decision of the Hearings Office in this case 16. The first point to note is that the Office appears to have adopted and set a high threshold for the exercise of the discretion to allow cross-examination of a deponent. That can be seen from the Office s letter dated 8 November 2013: Clearly, the Commissioner has discretion under section 160(2) to permit crossexamination, but as already stated the Commissioner will only exercise that discretion if satisfied cross-examination is justified, and that the evidence could not have otherwise been given in writing. Such a determination cannot, of course, be made until the Commissioner has been supplied with reasons that are sufficiently detailed to enable that determination to be made. Turning to the Aqua Technics cases, which been referred to by both parties, the office does not consider that they have the effect of lowering the threshold for when the Commissioner should permit cross-examination. In particular, their [sic] seems to be a mistaken point of view that the comments made by the Court of Appeal at paragraph [65] suggest that cross-examination should be really available at the request of parties in IPONZ proceedings. 17. As described above, that to the extent that it can be determined, the threshold being applied is higher than what is appropriate. 18. Secondly, the Office is suggesting that cross-examination can be refused on the basis that evidence could have been given in writing. Not only is there no valid basis in the Act for such a stipulation, but with respect, even if evidence were available that might contradict evidence filed by another party, which, for innumerable reasons it often may not be, filing such evidence does not achieve the same effect as cross examining and testing the veracity of the evidence that has already been filed. 19. Furthermore, the Office is ignoring the fact that by the time the determination of the application for cross-examination was made, evidence had already been closed. Submissions of Owner (Cross examination) (2).docx 6

207 20. Thirdly, the specific responses from the Office to the reasons put forward by the Applicant for the request for cross-examination reveal that the Applicant is being denied the opportunity to present its case in the best way it sees fit and that there is a real risk that the opposition to registration of the Applicant s trade mark will fall to be determined on the basis of evidence that is untested and likely to be unreliable. Referring to the Office s 18 February 2014 letter: Reason 1: production of document 20.1 The Office found that the issue of Mr Moon s failure to produce a signed copy of the agreement between the Applicant in the Opponent had already been traversed and dealt with. With respect, that response undermines the importance of that document which goes to a central issue in this proceeding. Clearly it was not in the interests of Mr Moon s employer to locate a copy of the agreement and put it before the Commissioner The Applicant is entitled to question Mr Moon as to the adequacy of the steps he took to locate a copy of the agreement and in fact is required to do so before it can ask the Commissioner to draw any inferences as to the reason why the document was not produced and/or any of its terms. Reason 2: unsubstantiated factual assertions 20.3 The Office refers to the fact that the Applicant has detailed only one such unsubstantiated assertion made by Mr Moon. That should not be any impediment to granting permission to cross-examine the deponent. Even if there is only one valid reason for allowing crossexamination, overruling it will still result in an injustice That is not to say however that the Applicant accepts that Mr Moons evidence contains only one such assertion. A review of his evidence Submissions of Owner (Cross examination) (2).docx 7

208 shows several such statements of fact unsupported by any more tangible evidence. Forewarned is forearmed however and the Applicant cannot be expected to detail each and every such aspect or the principles of cross-examination will be undermined It must therefore be sufficient that the Applicant has it detailed one specific instance Indeed the Office s suggestion that the credibility of Mr Moon could be challenged through submissions and evidence to the contrary is, in the Applicant s submission, impractical. It is well recognised that the credibility of competing evidence cannot be really ascertained without cross-examination. 3 Similarly, unless the conclusion can clearly drawn on the basis of uncontrovertable evidence, it is not open to a party to make such a submission if the relevant points have not been put to the witness in cross-examination. Reason 3: contradictions in factual assertions 20.7 It would be unjust to put the Applicant in the position of having to prove a negative, particularly when it concerns a direct allegation regarding a statement made by the Opponent. In the absence of contemporaneous documents or similar, the only way to challenge the Opponent s denial of that allegation is through cross-examination With respect, the Office s conclusion that the Applicant could have filed further evidence to support Ms Heasman s assertion, is incorrect. The Applicant does not have the opportunity under the Regulations to file evidence in reply. Nor does it have the opportunity to file further evidence that has the sole purpose of bolstering evidence already filed In any event, the Commissioner would once again be left in the position of having to reconcile conflicting written evidence without 3 See for example Aqua technics (CA) Submissions of Owner (Cross examination) (2).docx 8

209 any means of determining the credibility or otherwise of the respective deponents. Reason 4: factual assertions outside the scope of the witness s expertise The Applicant repeats the foregoing submissions in relation to contradictions in factual assertions With respect, the claim that the lack of apparent qualifications will go to weight is unhelpful. It is not possible to make any assessment as to weight without drawing an inference as to whether he was qualified to make the statement or not. Such an inference will be prejudicial to either the Applicant or the Opponent depending on the finding reached. Either way, given Mr Moon has not seen fit to offer an explanation, the Commissioner cannot determine the basis upon which Mr Moon may or may not be qualified to make the statement unless he is cross-examined as to the basis upon which he made it. Conclusion 21. A recent High Court decision demonstrates the consequences of crossexamination not being permitted. In Zoggs v Sexwax [2013] NZHC 1494 Simon France J noted, at paragraph 25, that it was not open to the Commissioner to prefer, on the papers alone, the recollection of one deponent over the other. This illustrates that the Applicant s ability to request that the Commissioner prefer its evidence over that of the Opponent will be significantly undermined if cross-examination of Mr Moon is not permitted. 22. The Applicant does not suggest that cross-examination should be automatically available at the request of a party to a proceeding. However, it is submitted that in the present case at least, valid justification for the request has been given. Submissions of Owner (Cross examination) (2).docx 9

210 23. It has been shown that the Applicant will likely suffer prejudice if crossexamination is not allowed. It has also been shown that the ability of the Commissioner to reach a substantive finding on the basis of uncontrovertable evidence may also be jeopardised if the credibility of the maker of certain aspects of the evidence before him/her cannot be tested. 24. The Applicant s request for cross-examination of Mr Moon should therefore be granted. Dated this 23 rd day of June 2014 D.L Marriott / Elena Szentivanyi Counsel for the applicant Submissions of Owner (Cross examination) (2).docx 10

211 5 June 2014 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Confirmation of interlocutory hearing date The opponent has advised that it will not be attending the hearing. In accordance with the applicant s request, the hearing is scheduled for 10am, Thursday 26 June The hearing will take place via a teleconference link between our Auckland and Wellington offices, and will be heard by Assistant Commissioner, Natasha Alley. Applicant s counsel should make its way to our Auckland venue at level 6, Tower Building, 45 Queen Street, and ask at reception to be taken to the Harakeke room and for help in establishing the video link. Submissions are to be provided prior to the hearing so they may be passed to the Assistant Commissioner. The deadline for filing submissions is 23 June Under regulation 126, the hearing fee is required no less than 10 days prior to the hearing date. A task has been created for payment of this fee. If you have any questions, please contact me.

212 Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs Case: of 2

213 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE 30 May 2014 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner Intellectual Property Office of New Zealand P O Box 9241 Wellington NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants We refer to your letter of 28 April 2014 and to our letter of 9 May In your letter you requested the parties advise how they wish the case to be decided by 14 May 2014 and stated that, if the opponent wished to appear at the hearing, it was expected that the parties would agree on a preferred date for the hearing. We have not been informed that the opponent wishes to be heard in this interlocutory matter. In our letter we advised that the applicant s counsel, who is based in Auckland, is available on 26 June 2014 and wishes to appear via telephone or video link. We would therefore be grateful for confirmation of the 26 June 2014 hearing date, the hearing officer, and the availability of telephone/video conference facilities, in the near future. Yours faithfully HENRY HUGHES Elena Szentivanyi Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

214 13 May 2014 By Hearings Office Intellectual Property Office of New Zealand DX SX11129 Wellington Attention: Simon Pope Trade mark application no THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS - in the name of Chartered Institute of Management Accountants - opposition thereto by New Zealand Institute of Chartered Accountants - Proceeding No. 668 We refer to your letter of 28 April The New Zealand Institute of Chartered Accountants (the Opponent ) will not be appearing or filing submissions at the interlocutory hearing. The Opponent continues to object to the request for cross examination of its witness, Mr Moon, and maintains that the applicant has not met the requisite onus to establish that cross examination is justified. The Opponent relies on the papers already filed on this issue, namely the Opponent s submissions dated: 27 January November 2013 We await the outcome of the decision of the Hearings Office. Yours faithfully Kensington Swan Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Solicitor Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com

215 OUR REF: V13010.EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) 9 May 2014 The Commissioner Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants - Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants The applicant s counsel is available on Thursday 26 June The applicant s counsel is based in Auckland. If necessary, the applicant s counsel is willing to visit an MBIE premises to appear via telephone or video conference. We look forward to confirmation of the hearing officer, hearing date, and telephone/video conference arrangements in due course. Yours faithfully HENRY HUGHES Mark Eftimov (in Elena Szentivanyi s absence) Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes Law Ltd

216 28 April 2014 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Interlocutory hearing dates We refer to the applicant s request for an interlocutory hearing on the Commissioner s decision refusing cross examination of the opponent s witness, Mr Moon. The available hearing dates are: Wednesday 25 June 2014 Thursday 26 June 2014 We ask both parties to advise how they wish the case to be decided: On the papers filed no fee By written submissions fee required Attendance at a hearing fee required Please note, that if both parties counsel are Wellington based we would expect them to appear in person if they want to appear at the hearing due to complications with our teleconference facilities. We request that the parties confirm how they wish the case to be decided by 14 May If the opponent also wishes to appear at the hearing we expect Counsel for the parties to agree between themselves as to the preferred date for the hearing.

217 If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs Case: of 2

218 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE 3 April 2014 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants Dear Commissioner We refer to the Office s letter of 11 March The applicant, the Chartered Institute of Management Accountants, requests a hearing on the Commissioner s decision not to order cross-examination or Mr Richard Brandon Moon. The applicant will be represented by counsel who would prefer to appear by telephone conference. Please confirm that this will be possible. We look forward to receiving timetabling information in due course. Yours sincerely HENRY HUGHES Elena Szentivanyi Address for service and agents for the Chartered Institute of Management Accountants Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

219 11 March 2014 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants We refer to the applicant s letter of 4 March Extension of Time Granted The applicant has requested a one month extension in which to request a hearing on the exercise of the Commissioner s discretion. Having considered the grounds stated in the request, the office considers they meet the requirements of regulation 32. The extension of time request is granted. The new deadline for the applicant to request a hearing is 4 April If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs

220 Case: of 2

221 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE 4 March 2014 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner Intellectual Property Office of New Zealand P O Box 9241 Wellington NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants 1. We refer to the Office s letter of 18 February 2014, received by us on 19 February In that letter, the Office advises that the applicant s request for cross-examination of Mr Moon is declined. 3. The letter advises that the applicant has until 4 March 2014 to request a hearing on the exercise of the Commissioner s discretion. 4. The applicant has sought advice on the Commissioner s declination of the request for cross-examination. Further time is required to finalise instructions regarding the potential hearing. 5. In the circumstances the applicant requests an extension of time of one (1) month from 4 March 2014 of the deadline to request a hearing on the exercise of the Commissioner s discretion in response to the applicant s request for cross-examination. 6. We look forward to favourable consideration of this request. Yours sincerely HENRY HUGHES Elena Szentivanyi / Edward Butler Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

222 18 February 2014 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence Request for cross-examination of witness declined Having carefully considered all correspondence from the parties, the applicant s request to crossexamine Mr Moon is declined. As accepted by all concerned, cross examination before the Commissioner is only available when truly justified, and where the evidence cannot otherwise be given in writing. Reasons given for cross-examination The Office does not consider that the reasons given by the applicant justify the cross-examination of Mr Moon. Each of the reasons is addressed below: Reason 1: Production of document The Office considers this matter has already been traversed and dealt with. The opponent s witness has provided a Statutory Declaration clearly setting out all the steps he took to try and locate the requested document (a copy of the signed agreement) which, notably, neither party can locate despite both parties seemingly having signed it. Reason 2: Unsubstantiated factual assertions Despite the applicant s allegation that Mr Moon has made unsubstantiated assertions only one example has been given, namely members of the public (and older members) sometimes refer to the institute as the Institute of Chartered Accountants. In terms of testing the credibility of the witness on this statement, there seems no reason why the opponent couldn t challenge this through its

223 submissions and evidence to the contrary. This matter alone certainly does not seem so central to the case, or of sufficient gravity, to require cross-examination. Reason 3: Contradictions in factual assertions The applicant alleges Mr Moons factual assertions contradict its evidence that the opponent had previously consented to the use of the applicant s trade mark. The Office accepts the opponent s position that the applicant could have filed further evidence to support Ms Heasman s assertion and still has the opportunity to present submissions on this point at the substantive hearing. Reason 4: Factual assertions outside the scope of the witness s expertise The applicant suggests that it should be entitled to cross-examine Mr Moon on his statement that he consider[s] that use of any combination of the words Chartered, Institute and Accountants in New Zealand is likely to confuse the public into thinking that the entity or individual using such words is a member of the Institute or otherwise associated with the Institute because this is a matter outside his scope or experience. The Office considers that it would have been a simple enough matter to challenge Mr Moon s statement through conflicting evidence. In any event, the question of whether he is suitably qualified to give such a statement really only goes to the weight which it should be given, and such issue can be dealt with by submissions at the substantive hearing. Possible dates for substantive hearing It would appear that this case is finally ready to proceed to a hearing pending whether the applicant wishes to be heard on the exercise of the Commissioner s discretion to refuse to summons the opponent s witness for cross-examination. The applicant has until 4 March 2014 to request a hearing on the exercise of the Commissioner s discretion. Once the Office knows whether the applicant wishes to take this matter to an interlocutory hearing, it will suggest possible dates for the substantive hearing. If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs Case: of 2

224 27 January 2014 By Commissioner of Trade Marks Intellectual Property Office of New Zealand DX SX11129 Wellington Attention: Hearings Office Trade mark application no THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS - in the name of Chartered Institute of Management Accountants (the 'applicant') - opposition thereto by New Zealand Institute of Chartered Accountants (the opponent ) - Proceeding No. 668 Introduction 1 We refer to the Office s letter of 16 December 2013, requesting our response to the letter of Henry Hughes filed on 6 December 2013 and provided to us on 12 December 2013, and all previous correspondence relating to the applicant s request to cross-examine the opponent s declarant Mr Richard Moon. 2 Our view has not changed. The applicant has still not established that cross-examination is required, despite numerous opportunities. Summary 3 The applicant has failed to demonstrate that cross-examination is required. The applicant s primary reason for requesting cross-examination appears to be an attempt to re-litigate a matter already determined by this Office (namely, Mr Moon s inability to locate a requested document). 4 The other supposed evidentiary issues raised in support of the applicant s request for crossexamination are either unsupported by the evidence filed or are matters properly dealt with through legal submissions at the substantive hearing. In any event the applicant has not sufficiently demonstrated that the rare discretion to permit cross-examination should be exercised. When will cross-examination be permitted? 5 We endorse the approach of the Office taken in its letter of 9 October 2013 as to when crossexamination will be permitted under s 160(2) of the Trade Marks Act Further, as stated in the Office s letter of 8 November 2013: [T]he Commissioner has discretion under section 160(2) to permit cross examination, but as already stated the Commissioner will only exercise that discretion if satisfied that cross examination is justified, and that the evidence could not have otherwise been given in writing

225 6 An example supporting the Office s interpretation is DB Breweries Ltd v Society of Beer Advocats [2011] NZIPOTM 19. At [25] of this decision, the Assistant Commissioner commented on cross-examination in trade mark applications, noting that the low number of hearings in which cross-examination had been permitted suggests that in most cases matters of credibility etc. can be resolved on the papers or through submissions at the hearing. This demonstrates that this discretion to allow cross-examination will only rarely be exercised. 7 The applicant has not established that there is genuine concern as to the credibility of Mr Moon, or the veracity of written evidence, which cannot be resolved other than by crossexamination. Nor has it established that there is a contradiction between written evidence which cannot be resolved other than by cross-examination. The applicant has not met the threshold required for establishing that cross-examination of Mr Moon should be permitted. Therefore, the Office must refuse the applicant s request to cross-examine Mr Moon. Why cross-examination should not be ordered here 8 The applicant has not demonstrated that cross-examination is justified by their 6 December 2013 letter or in their earlier communications to the Office. 9 In particular the opponent submits that none of the four reasons provided by the applicant in its 6 December 2013 letter justify the Office exercising the rare discretion to permit crossexamination. 10 The applicant s primary reason for requiring cross-examination appears to arise from a wish to question Mr Moon on his attempts to locate a particular document (at [11a] and [16] [18] of Henry Hughes letter). The Office has already ruled that the steps taken by Mr Moon to try to locate the requested document were reasonable. Therefore, the applicant s desire to crossexamine Mr Moon on this process is an improper collateral attack on the Office s determination. It cannot be a sufficient reason in itself for requiring cross-examination. 11 The applicant also claims that Mr Moon has made factual assertions that are not directly supported by documentary or other material (at [11b]). The only example provided is that Mr Moon states that people sometimes refer to the Institute as the Institute of Chartered Accountants. The applicant is entitled to make submissions to the Assistant Commissioner on the weight to be given to this statement at the substantive hearing. However, there is no need for Mr Moon to be cross-examined on this statement or any other supposed factual assertions. This is certainly not enough to be considered a genuine concern as to the credibility of a witness or the veracity of written evidence which cannot be resolved other than by cross-examination. 12 The applicant s third reason provided for requesting cross-examination is the claim that Mr Moon makes factual assertions that contradict evidence filed by the applicant. The only example provided to support this is the claim that Mr Moon s evidence contradicts the Applicant s assertion that the Opponent had previously consented to the use of the Applicant s trade mark (at [11c]). The applicant has had the opportunity to file evidence on this point to support Ms Heasman s assertions. If it has not sufficiently done so to ultimately convince the Assistant Commissioner on this issue it should not be permitted to attempt to now do so by cross-examination of the opponent s declarant. Therefore, this reason cannot justify cross-examination. Further, the applicant has failed to establish that any alleged

226 contradictions could not be dealt with by the Assistant Commissioner at the substantive hearing, either through evidence which the applicant has already had opportunity to file, or legal submissions. 13 The applicant s final reason for requesting cross-examination is that Mr Moon has made statements that appear to be outside the scope of his experience or expertise and reference is made to the statements made in paragraph 8.6 of Mr Moon s first Statutory Declaration. These statements would be read in the context of his entire Statutory Declaration, including paragraph 6, and again the Assistant Commissioner will be able to assess the weight to be given to such statements without the need for cross-examination. Again, to the extent the applicant considers Mr Moon unqualified to make particular statements, the applicant is entitled to make such legal submissions before the Assistant Commissioner. Therefore crossexamination is not required. Conclusion 14 The applicant has had several opportunities to justify its request for cross-examination of Mr Moon. It has failed to do so. The opponent has been put to significant time and expense responding to these requests, which it considers frivolous. 15 We request that this application for cross-examination be dismissed. Yours faithfully Kensington Swan Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Solicitor Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com

227 16 December 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We thank the applicant for providing further details about its request for cross examination. We now invite the owner to provide its response by 27 January At this stage, it looks extremely unlikely that the cross examination issue will be resolved in good time before the substantive hearing, which is scheduled for 30 January The hearing is therefore postponed pending the cross examination issue being concluded. The office will then set a new hearing date. If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs

228 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE 6 December 2013 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants 1. We refer to the Office s letter of 8 November The Office has requested further information regarding the Applicant s request to cross-examine the Opponent s key declarant Mr Moon. 3. We appreciate that cross-examination is not a standard occurrence in trade mark proceedings before an Assistant Commissioner. The Applicant is not suggesting that cross-examination should be readily available at the request of one party to a proceeding. 4. However, we do suggest that in certain circumstances it is appropriate to test evidence that is before the Commissioner through cross-examination. These circumstances include those where a party s evidence contains contradictory and/or unsubstantiated statements, and where a party wishes to draw an adverse inference from the other party s evidence. Such are the circumstances in this proceeding. The law 5. As acknowledged by the Office, the Trade Marks Regulations 2003 specifically provide for cross-examination. Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

229 6. We note that discussion to date has centred on the Aqua Technics cases. 7. A recent High Court decision demonstrates the consequences of cross-examination not being permitted. In Zoggs v Sexwax [2013] NZHC 1494 Simon France J noted, at paragraph 25, that it was not open to the Commissioner to prefer, on the papers alone, the recollection of one deponent over the other. 8. This decision shows the importance of cross examination, and demonstrates that if cross-examination of Mr Moon is not permitted, the Applicant s capacity to request that the Commissioner prefer its evidence over that of the Opponent will be significantly undermined. 9. Further, we note that the Aqua Technics decision continues to feature in decisions of Assistant Commissioners of Trade Marks. In Nalli Kuppuswami Chetty and Nalli Kuppuswami Ramanathan trading in partnership as Nalli Chinnasami Chetty v Shri Nallis Sambbasivam [2013] NZIPOTM 29, the Applicant submitted that there was doubt as to the credibility of statements made in the Opponent s evidence. The Assistant Commissioner stated that she could not accept the Applicant s submission and the declarations stood, subject to weight. In doing so, the Assistant Commissioner referred to the Aqua Technics decision (paragraph 14, footnote 5). 10. As stated above we do not suggest that cross-examination should be readily available at the request of a party to a proceeding. However, we suggest that the authorities referred to above, and in previous correspondence, support the Applicant s request for cross-examination of Mr Moon in the present matter. Reasons for cross-examination 11. The Applicant wishes to cross-examine Mr Moon for the following reasons: a) the Applicant may ask the Commissioner to draw an adverse inference from the response of the Opponent to the Commissioner s request for production of further documents, including the process followed by Mr Moon in his attempt to locate the requested document, and in particular further details regarding Mr Moon s conversation with Mr Muriwai and the responses he received to his to NZICA staff regarding the requested document (see third Moon declaration, paragraphs 5(a) and (c)); b) Mr Moon makes a number of factual assertions which are unsubstantiated by any documentary or other supporting material for example at paragraph 3.4: members of the public (and older members) sometimes refer to the Institute as the Institute of Chartered Accountants ; c) Mr Moon makes a number of factual assertions which contradict the Applicant s evidence - for example the Applicant s assertion that the Opponent had previously consented to the use of the Applicant s trade mark; d) Mr Moon makes statements regarding matters which are, or appear on the face of his evidence to be, outside the scope of his experience or expertise for example at paragraph 8.6: I consider that use of any combination of the words "Chartered", "Institute" and "Accountants" in New Zealand is likely 2

230 to confuse the public into thinking that the entity or individual using such words is a member of the Institute or otherwise associated with the Institute. 12. These points, and others, cannot be resolved by filing further evidence as the matters relate to evidence which is solely within the knowledge, possession and/or control of Mr Moon. 13. Should cross-examination be ordered, the Applicant submits that it is entitled to cross-examine Mr Moon on all relevant matters, and to do so in a manner that the Applicant considers appropriate. 14. If the Applicant is forced to disclose all relevant matters ahead of time, this will significantly undermine its ability to cross-examine robustly, as Mr Moon and/or his counsel will have the opportunity to prepare and rehearse. In such circumstances the Commissioner will not have the benefit of Mr Moon s immediate, unrehearsed responses to the Applicant s questions. 15. Indeed the Applicant considers that the disclosure required to date has already undermined its position in a material way. The requested document 16. The Commissioner ordered the production of the requested document and in doing so has acknowledged the importance of the document. The Opponent was entitled to challenge the Commissioner s decision to order the production of the requested document but did not do so. 17. The Applicant made a further request for the production of documents, however this request was declined. 18. In making two applications for an order for the production of documents, the Applicant has sought to resolve matters regarding the requested document other than by cross-examination. Other circumstances favouring cross-examination 19. There will be no significant prejudice to the Opponent or to Mr Moon if he is summonsed as a witness. Cross-examination is unlikely to be lengthy. The statements at issue are those put into evidence by Mr Moon. Mr Moon resides in Wellington. 20. The Applicant is willing to be flexible to accommodate Mr Moon s schedule. 21. Conversely if cross-examination is not allowed the evidence will not be tested appropriately and the Applicant will be significantly disadvantaged as it will not otherwise be able to: a) ascertain the veracity of Mr Moon s statements; b) request that the Assistant Commissioner find that the Opponent s evidence lacks credibility; and/or c) request that the Assistant Commissioner otherwise draw an adverse inference from the Opponent s evidence. 3

231 22. Should there be an adverse finding of fact based on Mr Moon s evidence, as in the Zoggs proceedings, the Applicant may be forced to seek leave to file further evidence in a subsequent appeal. Such a process does not accord with the principle of just and expeditious determination of proceedings. 23. We look forward to favourable consideration of the Applicant s request for crossexamination. Yours faithfully HENRY HUGHES Elena Szentivanyi / Edward Butler 4

232 21 November 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Extension of Time Granted We refer to the applicant s letter of 19 November The applicant has requested a short extension of two weeks to provide the information requested in the office s letter of 8 November The office considers that the applicant s reasons justify the extension being granted. The new deadline for the applicant s response is 6 December If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs

233 Case: of 2

234 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE 19 November 2013 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner Intellectual Property Office of New Zealand P O Box 9241 Wellington NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants 1. We refer to the Office s letter of 8 November In that letter, the Office requests more information regarding: the alleged contradiction between the written evidence submitted in the above proceeding; why the alleged contradictions cannot be resolved other than by cross-examination; and why the applicant considers that Richard Moon is not a credible witness. 3. The Office requests that the Applicant provides this further information by 22 November The Applicant intends to provide further information to the Office, and has commenced preparation of its response. 4. However, the applicant requests a short extension of two weeks from 22 November 2013 to respond to the Office s letter. The grounds for its request are that further time is required to prepare the Applicant s response to the request, and that the Applicant s counsel is out of the country until 24 November The Applicant wishes to discuss this matter in detail with its counsel. 5. We look forward to favourable consideration of this request. Yours sincerely HENRY HUGHES Elena Szentivanyi / Edward Butler Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

235 8 November 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We refer to the following letters regarding the applicant s request to cross examine the opponent s witness: Applicant s request for cross examination of 23 September 2013 Offices response of 9 October 2013 Applicant s further letter of 23 October 2013 Opponent s response of 7 November 2013 Reasons for cross-examination In the office s letter of 9 October 2013 we asked the applicant to outline in sufficient detail why it considered cross examination to be necessary so the opponent could address that request. We made it clear that only once the office had this information from both parties would it be in position to assess whether cross examination was actually necessary before deciding whether to summons the witness. We accept the opponent s submission that the applicant s letter of 23 October 2013 did not provide any further elaboration on: the alleged contradiction between the written evidence submitted in the proceeding; why the alleged contradictions cannot be resolved other than by cross-examination; or why the applicant considers that Richard Moon is not a credible witness.

236 We therefore ask the applicant provide more information to answer the points above by 22 November Cross examination generally There seems to be some disagreement as to the entitlement to cross-examine in IPONZ proceedings based on the Aqua Technics cases. Clearly, the Commissioner has discretion under section 160(2) to permit cross examination, but as already stated the Commissioner will only exercise that discretion if satisfied that cross examination is justified, and that the evidence could not have otherwise been given in writing. Such a determination cannot, of course, be made until the Commissioner has been supplied with reasons that are sufficiently detailed to enable that determination to be made. Turning to the Aqua technics cases, which have been referred to by both parties, the office does not consider they have had the effect of lowering the threshold for when the Commissioner should permit cross-examination. In particular, their seems to be a mistaken point of view that the comments made by the Court of Appeal at paragraph 65 suggest that cross examination should be readily available at the request of parties in IPONZ proceedings. However, as noted by the opponent, the Supreme Court characterised this very passage as nothing more than a passing comment, and sought to clarify that what the Court of Appeal was really saying is that it had already dealt with the criticisms directed to the evidence of the respondent s witness. The opponent submits that the Supreme Court also noted that cross-examination before the Assistant Commissioner was either not customary (i.e. not permitted at all) or, at best, quite rare, in agreement with the approach in Indtex Trading. We would suggest that this was actually the position stated by the appellant in its application for leave to appeal, not something noted by the Supreme Court. In the end, the office maintains that its current approach to requests for cross examination remains the correct one. Hearing vacated pending cross-examination determination The substantive hearing set down for 22 November 2013 has now been vacated as there is insufficient time to receive the further information requested from the parties, and if necessary, summons the witness. The hearing has been re-scheduled for 10am Thursday 30 January If you have any questions, please contact me. Case: of 3

237 Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs Case: of 3

238 7 November 2013 By Commissioner of Trade Marks Intellectual Property Office of New Zealand DX SX11129 Wellington Attention: Hearings Office Trade mark application no THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in the name of Chartered Institute of Management Accountants (the applicant ) - opposition thereto by New Zealand Institute of Chartered Accountants - Proceeding 668 Introduction 1 We refer to the letter of 23 October 2013 filed by Henry Hughes on behalf of the applicant regarding the applicant s request to cross examine Richard Moon at the Hearing set down for 26 November We submit that cross examination of Richard Moon is not necessary, nor will it produce any material of significant relevance. The applicant s request should therefore be declined. Summary 3 We refer to the Office s letter of 9 October 2013 requesting further information regarding the applicant s initial request of 29 September 2013 to cross examine Richard Moon. In particular, the Office stated: In the applicant s statement above, concern has been raised about several statements in Mr Moon s declaration, although they have not been elaborated upon in any detail. We therefore ask the applicant to provide more detailed reasons as to why cross examination is necessary. (Our emphasis) 4 The applicant s letter of 23 October 2013 has not provided sufficient elaboration or detail as requested by the Office. In particular, we do not consider that the applicant has provided detailed reasons or elaboration on: a b c the alleged contradiction between the written evidence submitted in the proceeding; why the alleged contradictions cannot be resolved other than by cross-examination; or why the applicant considers that Richard Moon is not a credible witness. 5 It is established that cross-examination is permitted no more than rarely before the Assistant Commissioner. In light of this, and the failure by the applicant to provide the further information requested, we therefore submit that the Office should refuse the applicant s request to cross examine Mr Moon

239 Relevant law relating to cross-examination of witnesses before the Commissioner Approach to cross-examination of witnesses before the Commissioner 6 The Office has already accurately summarised the proper approach to cross-examination under section 160 of the Trade Marks Act 2002 ( Act ) in its letter of 9 October In particular, the Office noted: Generally speaking, cross examination will only be permitted if the office is satisfied that there is genuine concern as to the credibility of a witness or the veracity of written evidence, or where there is a contradiction between written evidence submitted, which cannot be resolved other than by cross examination. 7 This is an accurate statement of law. It reflects the clear statutory wording of section 160, which requires the permission of the Commissioner before a declarant can be crossexamined. This interpretation was accepted in Indtex Trading Ltd v Otago Rugby Football Union (unreported, Paterson J, High Court, M1535/AS00, 8 March 2002) at [12] where the High Court affirmed the idea that little if any cross-examination is allowed during a trademark application. 8 Indeed, this accords with the approach taken to cross-examination in judicial review proceedings, which should apply by analogy here. In judicial review, as in trade mark oppositions, cross-examination is only permitted by leave. As Graeme Taylor notes in Judicial Review: A New Zealand Perspective (LexisNexis NZ Ltd, Wellington, 2010) at [10.37]: An application for cross-examination should state the factual areas for crossexamination relating them to the grounds for challenging the decision and matching them to passages in particular affidavits and documentary material contended to give rise to gaps and deficiencies which should be subject to cross-examination. However, this does not mean that wherever there are conflicts within or among affidavits cross-examination will be allowed. The gaps or contradictions need to be related to the issues before the court and the need for cross-examination established to enable those issues fairly to be determined. Overall, the principle seems to be whether, given the affidavits, cross-examination is necessary to enable justice to be done. 9 As noted in this extract, the applicant must establish the necessity of cross-examination by referring specifically to the evidence or documents giving rise to the claims of contradictions or credibility. This reflects the approach taken by the Office in this proceeding to date. Why the applicant s suggested approach to cross-examination is incorrect 10 The applicant s contrary approach to cross-examination under section 160 is set out in its letters of 20 September 2013 and 23 October This contrary approach is not supported by any authorities and, indeed, is contradicted by the comments above and the New Zealand Supreme Court. 11 In its first letter, in September, the applicant relies on a comment at [65] of the Court of Appeal in Aqua Technics Pool & Spa Centre New Zealand Ltd v Aqua-Tech Ltd [2007] NZCA 90. The applicant seems to overlook the fact that this very comment was considered by the Supreme

240 Court on appeal in Aqua Technics Pool & Spa Centre NZ Limited v Aquatech Ltd [2007] NZSC 52, (2007) 18 PRNZ 547 at [5]. It was referred to by the Supreme Court as merely a passing comment. In the same judgment, the Supreme Court also noted that crossexamination before the Assistant Commissioner was either not customary (i.e. not permitted at all) or, at best, quite rare, in agreement with the approach in Indtex Trading. 12 In its second letter, in October, at [9] and [10], the applicant went on to query the Office s interpretation of section 160. It alleged that the High Court Rules and Evidence Act 2006 apply to the specific issue of cross-examination before the Assistance Commissioner. However, even if the High Court Rules and Evidence Act are relevant to proceedings before the Assistant Commissioner generally, they clearly cannot override the specific statutory reference to cross-examination under section 160. Rather, as with the approach taken in judicial-review, cross-examination should be permitted only rarely. Failure to establish necessity, or even significant relevance, of cross-examination 13 The applicant has not established that cross-examination of Mr Moon is necessary and its application should therefore be denied. 14 Even if a lower threshold for requirement cross-examination is established (such as the approach under s 92 of the Evidence Act 2006), cross-examination still should not be permitted in this instance, as the applicant has not elaborated on any supposed contradictions in the evidence that are of significance in this proceeding and that Mr Moon could reasonably be expected to provide evidence about. In other words, even under the Evidence Act 2006 the applicant would be required to show that cross-examination would lead to significantly relevant material being adduced. The applicant has failed to do this. No contradictions or issues of credibility have been established 15 The applicant has failed to establish with due particularity why it seeks cross-examination of Mr Moon. It has limited its claim to vague comments that there are contradictions in the evidence and that Mr Moon is not a credible witness. Neither of these is arguable. 16 First, we are not aware of any contradictions in the written evidence filed to date in the proceeding. The applicant has now had two opportunities to identify the alleged inconsistencies and has failed to do so. The applicant has instead made vague references to the contradiction or those statements made by Mr Moon that contradict the applicant s evidence (see, e.g. [17], of the applicant s October letter). However, at no stage has the applicant provided any detail as to the actual contradiction, let alone sufficient detail to justify permitting cross-examination. 17 Secondly, the applicant has also alleged that Mr Moon is not a credible witness at [17] of its October letter, yet failed to elaborate on this claim. This is a serious claim that shows a lack of respect for the opponent and the Office. We refute the allegation that Richard Moon is not credible. Mr Moon is a lawyer who is employed in a senior position at a highly regarded and respected organisation. Further, Mr Moon made the declarations filed in this proceeding under the Oaths and Declarations Act

241 The specific need for cross-examination has not been established 18 Even if the applicant could establish apparent contradictions and/or issues of credibility, it would still need to take the additional step of showing how cross-examination of Mr Moon could assist in resolving any perceived contradictions or issues of credibility. 19 It is unclear what the applicant seeks to cross-examine Mr Moon on. In its October letter, in response to the Commissioner s request for elaboration, the applicant claims that its concerns, which led to its application for cross-examination, arose from Mr Moon s inability to locate a particular document (a signed version of the co-existence agreement) at [15] [17]. 20 If the applicant is attempting to cross-examination Mr Moon on the steps he has taken to locate a signed version of the co-existence agreement, this would amount to a collateral attack on the Office s own previous ruling and be prohibited as a matter of public law. The Commissioner has already ruled on the matter of production of the co-existence agreement (we refer to the various correspondence between the parties and the Office and the Office s rulings of 14 May and 29 July 2013). The request to cross-examine Mr Moon is clearly an attempt to re-litigate this issue and should therefore be prohibited as a matter of law and basic natural justice. 21 Indeed, we note in passing that natural justice favours a ruling that this application be denied. The applicant is seeking to attack the Office s earlier ruling, and has failed, despite requests, to provide information establishing the need for cross-examination of Mr Moon. No further opportunity to pursue this meritless application should be permitted. The opponent should not be put to the cost of responding to this spurious request, particularly in light of the clear legal position and the applicant s inability to respect the earlier rulings of the Office. Nor should the Office continue to expend resources considering further requests by the applicant of this nature. The significance of any contradiction or issue of credibility has not been established 22 In any event, even if the applicant seeks, for example, to cross-examine Mr Moon about the process he took to find the co-existence agreement (as suggested above at [21]), the applicant has not explained why this is a significant issue in this proceeding that requires cross-examination. Even on the approach of section 92 of the Evidence Act (discussed above at [14]), an applicant would need to at least establish the significance of an issue before cross-examination would be permitted. The applicant has failed to establish this. Concluding comments 23 We note in closing that the applicant has submitted that cross-examination would not inconvenience the opponent. This is contradicted by the comments above about natural justice at [20] and [21]. The opponent is inconvenienced already by having to respond to this meritless application. It should not be inconvenienced any further. 24 In addition, we note that Richard Moon must attend the New Zealand Institute of Chartered Accountants Annual General Meeting (AGM) on 26 November The applicant is therefore not available for cross-examination on 26 November

242 25 For the reasons discussed above, we request that the request to cross examine Richard Moon be denied. Alternatively, should CIMA be permitted to provide a fuller submission, we request an opportunity to respond, in accordance with principles of natural justice. 26 We look forward to the Office s ruling. Yours faithfully Kensington Swan Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Solicitor Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com Copy: elena@henryhughes.co.nz, Henry Hughes

243 OUR REF: V13010 EJS.EB YOUR REF: October 2013 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner of Trade Marks Intellectual Property Office of New Zealand PO Box 9241 Wellington NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants Opposition to Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants 1. We refer to the Office s letter of 9 October We agree that the primary mode of giving evidence in proceedings before the Commissioner is by way of affidavit or statutory declaration. 3. However, the Trade Marks Act 2002 ( Act ) also specifically anticipates crossexamination, and does not include a requirement that there is a good reason for cross-examination or that the evidence could not otherwise have been provided in writing. It is unclear where these requirements stem from. 4. The good reason for the cross-examination is the testing of the credibility of the opponent s key deponent. Further good reasons are natural justice, the public interest, and adherence to the principles of evidence codified in the Evidence Act The evidence could not otherwise have been provided in writing due to the statutory framework for requesting documents and information in the Act and Trade Marks Regulations The Office s letter goes on to state: Generally speaking, cross examination will only be permitted if the office is satisfied that there is genuine concern as to the credibility of a witness or the veracity of written evidence, or where there is a contradiction between written evidence submitted, which cannot be resolved other than by cross examination. Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

244 7. There is a contradiction between written evidence submitted in this proceeding, which cannot be resolved other than by cross-examination. The applicant attempted to resolve the contradiction at an earlier stage in the proceeding, however its request for production of further documents was declined. 8. The applicant has a genuine concern as to the credibility of a witness, and believes that statements in the second Moon declaration, which contradict the applicant s evidence, require testing. Authority for cross-examination 9. The High Court has noted that its rules of evidence apply to proceedings before the Assistant Commissioner of Trade Marks. The High Court Rules discuss crossexamination with reference to the Evidence Act Principles of evidence codified in the Evidence Act 2006, such as hearsay, are regularly applied and referred to in proceedings before an Assistant Commissioner of Trade Marks. 10. Further, in recent decisions, including those referred to in the applicant s request for cross-examination, the Assistant Commissioner has noted that despite a challenge to evidence, the evidence stands as the party challenging the evidence did not request cross-examination. There is no discussion in these decisions as to the requirements referred to in the Office s letter simply that it would be unfair to challenge the veracity of a witness if there had been no cross-examination of the witness. The High Court Rules and the Evidence Act Rule 9.15 of the High Court Rules discusses cross-examination duties. It reads: The exchange of briefs under this subpart does not affect the crossexamination duties referred to in section 92 of the Evidence Act Section 92 of the Evidence Act 2006 reads: 92 Cross-examination duties (1) In any proceeding, a party must cross-examine a witness on significant matters that are relevant and in issue and that contradict the evidence of the witness, if the witness could reasonably be expected to be in a position to give admissible evidence on those matters. (2) If a party fails to comply with this section, the Judge may (a) grant permission for the witness to be recalled and questioned about the contradictory evidence; or (b) admit the contradictory evidence on the basis that the weight to be given to it may be affected by the fact that the witness, who may have been able to explain the contradiction, was not questioned about the evidence; or (c) exclude the contradictory evidence; or (d) make any other order that the Judge considers just. 2

245 Statements in issue 13. Ms Maggie Heasman has deposed relevant facts concerning co-existence of the two organisations in the New Zealand marketplace. This is evidence concerning the relevant circumstances in trade. 14. It is settled that such circumstances are relevant to the matters at issue in this opposition, including the likelihood that deception or confusion will result from use of the trade mark CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS and relevant to the similarity of the trade marks CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS and the opponent s trade mark(s). 15. One of the key reasons the co-existence agreement is important to the applicant s case is that the unsigned agreement annexed to the Heasman declaration as exhibit MH-6 does not contain any provision or indication that the opponent was concerned about confusion or deception in the New Zealand marketplace. Other considerations Natural justice 16. The applicant has attempted to address its concerns through a request for an order or direction for the further production of documents. The response to this request from the opponent was insufficient to enable the applicant to address its concerns. The applicant then made a second request, for an order for the production of further documents, and this request was denied. 17. The applicant is entitled to test the veracity of those statements made by Mr Moon that contradict the applicant s evidence and, as the applicant has genuine concerns as to the credibility of the statements made by Mr Moon, to test his credibility. The effect of an order for cross-examination not being made is that not all relevant information will be before the Commissioner in reaching a decision regarding this trade mark application. 18. The Commissioner has suggested that the documents requested by the applicant in its second request for an order or direction for the production of documents are not relevant to this proceeding. 19. The applicant was entitled to request a hearing on that determination, however elected not to in the interests of resolving this matter speedily. At the time, there was a single Hearings Officer, and a long delay for hearing dates. Cross-examination would not considerably inconvenience the opponent 20. We note that NZICA s head office is in Wellington, 1.2km from the Intellectual Property Office of New Zealand. According to Mr Moon s declarations he resides in Wellington. Cross-examination would not be lengthy. 3

246 Public interest 21. The determination of this matter in an expeditious and just manner is in the public interest. The integrity of the trade marks register is also a matter of public interest. Conclusion 22. Simply put, following decisions of the Assistant Commissioner and the High Court, we submit that where a party to a proceeding has concerns as to the credibility of a witness and/or veracity of statements made in evidence in a proceeding before the Assistant Commissioner, and they wish to test these statements, cross-examination should be permitted. 23. This is particularly the case where the inconvenience to the parties is minor, and cross-examination is in the interests of natural justice, the public interest, and is in line with previous decisions of an Assistant Commissioner. Yours faithfully HENRY HUGHES Elena Szentivanyi / Edward Butler 4

247 9 October 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We refer to the applicant s letter of 20 September 2013, requesting to cross examine the opponent s witness, Mr Richard Brandon Moon. Specifically, the applicant has stated: The applicant wants to challenge the credibility of several statements made in Mr Moon s evidence and therefore requests that the Commissioner exercise her discretion to permit crossexamination of Mr Moon at the hearing that is set down for 26 November In considering this request, the office starts from the position that the Act requires all evidence to be given in written form, and leave to cross examine a declarant or deponent under section 160(2)(b) will only be granted where compelling reasons are presented which establish: there is good reason for cross-examination; or that the evidence could not have been otherwise provided in writing. Generally speaking, cross examination will only be permitted if the office is satisfied that there is genuine concern as to the credibility of a witness or the veracity of written evidence, or where there is a contradiction between written evidence submitted, which cannot be resolved other than by cross examination. In the applicant s statement above, concern has been raised about several statements in Mr Moon s declaration, although they have not been elaborated upon in any detail.

248 We therefore ask the applicant to provide more detailed reasons as to why cross examination is necessary. Once this is received, the office will then invite comments from the opponent to ensure the office has the information it needs to properly assess whether cross-examination is necessary. We ask for further details of the applicant s request by 23 October If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs Case: of 2

249 OUR REF: V13010 EJS.EWB.PS YOUR REF: Cse No. 668 FILED ONLINE 20 September 2013 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner Intellectual Property Office of New Zealand P O Box 9241 Wellington NEW ZEALAND Dear Commissioner The Chartered Institute of Management Accountants Opposition to NZ Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants 1. The applicant, the Chartered Institute of Management Accountants hereby gives notice that it wants to challenge Mr Richard Brandon Moon on the contents of his evidence in the above proceeding. 2. We note that in a number of recent decisions, Assistant Commissioner Walden makes the following comment regarding the veracity of evidence: I note that the veracity of this evidence has not been challenged through crossexamination, and therefore stands This comment refers to the words of the Court of Appeal in Aqua Technics Pool and Spa Centre New Zealand Limited v Aqua-Tech Limited [2007] NZCA 90 at [65]: [65]...if the appellant wanted to challenge Mr Ogden s evidence, the appellant should have asked that he present himself for cross-examination. It is unfair to challenge the veracity of a witness when the challenge has not been put to him, as it could have been. 1 Robert Stevenson v YPG IP Limited [2012] NZIPOTM 21, at [52]; Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14, at [87]; and Nalli Kuppuswami Chetty and Nalli Kuppuswami Ramanathan trading in partnership as Nalli Chinasami Chetty v Shri Nallis Sambbasivam [2013] NZIPOTM 29, at [14]. Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

250 4. The applicant wants to challenge the credibility of several statements made in Mr Moon s evidence and therefore requests that the Commissioner exercise her discretion to permit cross-examination of Mr Moon at the hearing that is set down for 26 November Yours sincerely HENRY HUGHES Elena Szentivanyi / Edward Butler Cc: Charlotte Henley Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 2

251 29 July 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We refer to the applicant s letter of 1 July 2013 seeking a direction by the Commissioner for the production of further documents, and the opponent s response of 15 July This request for further documents comes in response to the failure of the applicant to locate the document requested in the Commissioner s previous direction of 22 March 2013, being a signed copy of the strategic alliance between NZICA and CIMA executed in 2006 ( the original requested document ). The Office is not prepared to issue the further direction because: The opponent, by way of the statutory declaration of Richard Moon dated 23 April 2013 ( the third Moon declaration ), has already put into evidence the steps it took to try and comply with the Commissioner s order of 22 March 2013 to produce the original requested document; and The Office is satisfied that the opponent took reasonable efforts to locate the original requested document; and The further documents do no more than confirm the steps that the applicant took to locate the original requested document, which are already in evidence by virtue of the third Moon declaration; and The further documents are not, in the Office s assessment, relevant to the substantive proceeding because the steps taken to locate the original document do not go to the matters in question.

252 If you have any questions, please contact me. Yours sincerely Simon Pope Team Leader, Hearings DDI: For the Commissioner of Patents, Trade Marks, and Designs Case: of 2

253 15 July 2013 By Commissioner of Trade Marks Intellectual Property Office of New Zealand DX SX11129 Wellington Attention: Hearings Office Trade mark application no THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in the name of Chartered Institute of Management Accountants ( CIMA ) - opposition thereto by New Zealand Institute of Chartered Accountants - Proceeding We refer to the letter of 1 July 2013 filed by Henry Hughes on behalf of CIMA, which seeks an order from IPONZ for further documents to be produced by New Zealand Institute of Chartered Accountants (NZICA) in relation to the above proceeding (the further Requested Documents ). 2 NZICA took reasonable steps to try to locate the document requested to be provided by the IPONZ Hearings Office order of 22 March 2013, namely a signed copy of the strategic alliance between NZICA and CIMA executed in 2006 (the original Requested Document ), and when it was unable to do so provided a Statutory Declaration detailing the steps taken to locate the original Requested Document. 3 It is submitted that the original Requested Document is itself only peripheral to the substantive case in the above proceedings, so the documents now requested that only relate to the steps taken to locate the original Requested Document, but not the substance of the original Requested Document, should not need to be produced by NZICA. It would be unduly time consuming to obtain or recreate such further Requested Documents, which seems against the overall justice of the case in light of the fact that the further Requested Documents are not themselves relevant to the current proceeding. 4 CIMA has therefore failed to establish that the further Requested Documents meet the required test of relevance as set out in the Cure Kids cases referred to in CIMA s 1 July 2013 submissions

254 5 It is submitted therefore that the further Requested Documents should not be required to be produced by NZICA. Yours faithfully Kensington Swan Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Solicitor Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com Copy: elena@henryhughes.co.nz, Henry Hughes

255 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) 1 July 2013 The Commissioner Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 NEW ZEALAND The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants We enclose herewith a further Application for Direction to Produce Documents, pursuant to Regulation 31 of the Trade Marks Regulations 2003, for the production of documents by the Opponent. Yours faithfully HENRY HUGHES Elena Szentivanyi / Edward Butler Cc: Kensington Swan Barristers & Solicitors PO Box Wellington Attention: Charlotte Henley Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

256 IN THE MATTER of the Trade Marks Act 2002 AND IN THE MATTER AND of Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in Classes 9, 16, 35, 36, 41, 42, 45 in the name of The Chartered Institute of Management Accountants an Opposition thereto by the New Zealand Institute of Chartered Accountants Application for Direction to Produce Documents DATED: 1st July 2013 Henry Hughes Phone: (04) Facsimile: (04) P O Box 356 Wellington Ref: E J Szentivanyi

257 2 APPLICATION is hereby made by THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS ( CIMA or Applicant ) for a notice or other direction pursuant to Regulation 31 of the Trade Marks Regulations 2003 requiring that the New Zealand Institute of Chartered Accountants ( NZICA or Opponent ) file with the Commissioner, and provide to the Applicant and the Commissioner certain documents outlined below at paragraph 5, in a form that satisfies section 160(1) of the Trade Marks Act 2002, upon the following grounds: History of this Application 1. On 8 March 2013 CIMA filed an Application for a Notice or Other Direction ( the Application ) and the statutory declaration of Ms Maggie Heasman in support of the Application. The Application requested production of a signed copy of the strategic alliance between NZICA and CIMA executed in 2006 ( the Requested Document ) by NZICA. 2. On 22 March 2013 the Commissioner of Trade Marks granted the Application and on the same day gave notice to NZICA that production of the Requested Document was required by 23 April On 23 April 2013, the attorneys acting for NZICA filed the third statutory declaration of Mr Richard Brandon Moon ( the third Moon declaration ) in response to the application. The Requested Document was not provided. 4. In the third Moon declaration, Mr Moon declares that he has not been able to locate the Requested Document. At paragraph 5, Mr Moon outlines the following steps that were taken in order to locate the Requested Document: 5. The steps I have taken in order to locate the Requested Document are as follows: a b c d I sent an to all current employees of the Institute to find out if anyone knew of the location of the Requested Document. While I received some responses to my request, no one knew where the Requested Document is located. While the Institute's document management systems have improved in recent years, in 2006 there was no one centralised location at the Institute where physical copies of signed agreements were kept. The general practice was that the area of the business that was responsible for entering into an agreement would store a copy of the agreement. As I could not locate a physical copy of the Requested Document, I asked the Information Technology department at the Institute to search our online records for any files with the title 'CIMA'. Their search did not produce a copy of the Requested Document. I believe that, if there was an electronic copy of the Requested Document in the Institute's online system, it would have been found through this search as the search did produce an unsigned version of the document. I also contacted the former Chief Executive of the Institute, Garry Muriwai, and asked him whether he knew where the Requested Document may be located. I contacted Mr Muriwai as he was named in the document that was attached to Ms Heasman's first declaration as exhibit MH2-1 as a key contact. Further, entering into any such agreement with CIMA would have been something the Chief Executive's office would likely have been involved in and responsible for. Mr Muriwai could not inform me of the location of the Requested Document. 2

258 3 Further documents requested 5. CIMA requests that the Commissioner require NZICA to produce copies of the following documents ( the further documents ) that are in NZICA s control: 5.1. Mr Moon s to NZICA staff regarding his query regarding the location of the Requested Document (paragraph 5(a) of the third Moon declaration); 5.2. the responses received by Mr Moon to his query regarding the location of the Requested Document (paragraph 5(a) of the third Moon declaration); 5.3. the results of a search of NZICA s online records for any files with the title CIMA and any file notes concerning this search (paragraph 5(c) of the third Moon declaration); 5.4. any file notes or records regarding the Requested Document that were returned during the searches conducted by NZICA s Information Technology department (paragraph 5(c) of the third Moon declaration); 5.5. the unsigned version of the Requested Document (paragraph 5(c) of the third Moon declaration); and 5.6. Mr Moon s file note of his telephone discussion with Mr Garry Muriwai in March or April of this year (paragraph 5(d) of the third Moon declaration). 6. Further, should the Requested Document be uncovered as a result of NZICA s compliance with any orders made in response to this application, we request that the Commissioner require NZICA to produce the Requested Document, in a form acceptable to the Commissioner. Requirements that must be established by CIMA 7. The requirements that must be established by CIMA before the exercising of the Commissioner s power under Regulation 31 of the Regulations to require a party to produce documents were discussed in Cure Kids v National SIDS Council of Australia Ltd [2011] NZIPOTM 13 1 ( Cure Kids 1 ) and in Cure Kids v National SIDS Council of Australia Ltd [2012] NZIPOTM 32 2 ( Cure Kids 2 ). 8. In light of Cure Kids 1 and Cure Kids 2, CIMA must establish: 8.1. the documents that are required to be produced by NZICA are in NZICA s control 3 ; 8.2. the documents relate to a matter in question in this proceeding 4 or are arguably relevant to the proceeding 5 ; 1 At At 9. 3 Cure Kids 1, at 27.1, and Cure Kids 2, at Cure Kids 1, at Cure Kids 2, at 9.3 3

259 the documents have been identified with sufficient specificity so as to satisfy the Commissioner that the information is in existence 6 and that the request for the production of the documents is not a form of discovery 7 ; 8.4. the production of the documents will not unreasonably prejudice NZICA in a way that cannot be mitigated by CIMA 8 ; and 8.5. the documents are to be used only for the purpose of these proceedings Further, CIMA must convince the Commissioner that the overall justice of the case favours the making of the notice or direction 10. The documents are in NZICA s control 10. The further documents are either explicitly described in Mr Moon s third declaration, or their existence can be readily inferred by Mr Moon s comments in Mr Moon s third declaration. All of the documents are in NZICA s control. The further documents relate to matters in question in these proceedings and are relevant 11. In granting the Application on 22 March 2013, the Commissioner has accepted that the Agreement is relevant to matters in question in this opposition. The further documents relate to the Agreement. The further documents also relate to the conduct of NZICA in these proceedings, including the conduct of a key declarant in these proceedings. 12. The steps taken by NZICA to locate the Requested Document have not exhausted all reasonable avenues of enquiry. The third Moon declaration does not deny the existence of the Requested Document, which is likely to be located following the more rigorous enquiries of NZICA s corporate records and its personnel required to produce the further documents. The further documents have been clearly identified 13. The further documents to be produced have been clearly identified. Information regarding the existence and location of further documents is contained in Mr Moon s third declaration. This request for the production of the further documents is not a form of discovery. NZICA will not be unreasonably prejudiced by the production of the Agreement 14. Production of the further documents will not unreasonably prejudice NZICA. If NZICA is unreasonably prejudiced by production of this agreement, mitigation by CIMA is highly likely to be possible. 6 Cure Kids 1, at Cure Kids 2 at Cure Kids 1, at Cure Kids 2, at Ibid, at footnote 6. 4

260 5 15. CIMA will use the further documents only for the purpose of these proceedings. The overall justice of this case favours the making of the direction 16. Matters of public confusion or deception, and the integrity of the register of trade marks, are matters of public interest. 17. It is in the public interest that all relevant documents and information are placed before the Commissioner in determining these opposition proceedings. As stated above, the further documents are relevant, or are arguably relevant, to these proceedings. 18. It is in the public interest that the opposition proceedings are determined in a just and expeditious manner. Production of the further documents will assist in the just and expeditious determination of this proceeding. 19. This application is reasonable and is necessary. DATED this 1st day of July 2013 Per: THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS HENRY HUGHES Agents for the Applicant 5

261 14 May 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We refer to the opponent s letter of 23 April 2013, enclosing the statutory declaration of Richard Moon of the same date. The Moon declaration sets out detailed reasons why the opponent has been unable to supply a copy of the document; a signed copy of the strategic alliance between NZICA and CIMA executed in 2006, which the Commissioner ordered for production in the Office s letter of 22 March As this document cannot be produced, the next step in the proceeding is for the parties to file their submissions by the 22 November 2013 deadline. Yours sincerely Simon Pope Team Leader, Hearings (acting) DDI: For the Commissioner of Patents, Trade Marks, and Designs

262 23 April 2013 By Hearings Office Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 Attention: Helen Baxter - Hearings Case Officer Trade Mark application no THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS - opposition thereto by New Zealand Institute of Chartered Accountants - Proceeding We refer to the Hearings Office letter of 22 March 2013, requiring that the opponent, New Zealand Institute of Chartered Accountants ( NZICA ), produce the document identified as a signed copy of the strategic alliance between NZICA and CIMA executed in 2006 ( the Requested Document ). 2 We have been advised by our client, NZICA, that they have been unable to locate the Requested Document. A Statutory Declaration of Richard Moon, on behalf of NZICA, detailing the steps taken to try to locate the Requested Document is attached. Yours faithfully Kensington Swan Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Solicitor Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com Copy: Elena Szentivanyi, Henry Hughes

263 In the matter of the Trade Marks Act 2002 And In the matter of Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in classes 9, 16, 35, 36, 41, 42 and 45 in the name of the Chartered Institute of Management Accountants And An opposition by the New Zealand Institute of Chartered Accountants Statutory Declaration of Richard Brandon Moon in Response to Application for Order to Produce Document r Dated,) 'April 2013 KENSINGTON SWAN 89 The Terrace PO Box Wellington 6143 Solicitor: C A Henley Ph Fax DX SP26517

264 I, Richard Brandon Moon, of Wellington, solemnly and sincerely declare as follows: 1. I am the General Counsel for the New Zealand Institute of Chartered Accountants (Institute). 2. I have already made two declarations in this matter, and I make this third declaration in respect of the Commissioner's letter of 22 March 2013 which issued an order requiring the Institute to produce "a signed copy of the strategic alliance between NZICA and CIMA executed in 2006" ('Requested Document). 3. Unless otherwise indicated, I have knowledge of the facts set out in this declaration either through my own personal knowledge or from the records of the Institute to which I have access. I am authorised to make this declaration on behalf of the Institute. 4. While I have taken steps to comply with the Commissioner's requirement, I have not been able to locate the Requested Document. Therefore, I cannot provide the Commissioner with the Requested Document. 5. The steps I have taken in order to locate the Requested Document are as follows: a b I sent an to all current employees of the Institute to find out if anyone knew of the location of the Requested Document. While I received some responses to my request, no one knew where the Requested Document is located. While the Institute's document management systems have improved in recent years, in 2006 there was no one centralised location at the Institute where physical copies of signed agreements were kept. The general practice was that the area of the business that was responsible for entering into an agreement would store a copy of the agreement. As I could not locate a physical copy of the Requested Document, I asked the Information Technology department at the Institute to search our online records for any files with the title 'CIMA'. Their search did not produce a copy of the Requested Document. I believe that, if there was an electronic copy of the Requested Document in the Institute's online system, it would have been found through this search as the search did produce an unsigned version of the document. d I also contacted the former Chief Executive of the Institute, Garry Muriwai, and asked him whether he knew where the Requested Document may be located. I contacted Mr Muriwai as he was named in the document that was

265 attached to Ms Heasman's first declaration as exhibit MH2-1 as a key contact. Further, entering into any such agreement with C1MA would have been something the Chief Executive's office would likely have been involved in and responsible for. Mr Muriwai could not inform me of the location of the Requested Document. 6. While I consider I have taken reasonable steps to find a copy of the Requested Document, I have not been able to locate its whereabouts and, therefore, cannot provide the Commissioner with a copy. I make this solemn declaration conscientiously believing the same to be true and by virtue of the Oaths and Declarations Act Declared at Wellington this 2day of April 2013 before me: Richard Brandon Moon A Solicitor of the High Court of New Zealand Ellen Grace Thomson Solicitor Wellington

266 Note T Case 668 Charlotte Henley called to advise the document ordered to be produced cannot be found by the applicant. We discussed how to deal with the further time now required to file a statutory declaration to explain the steps taken to locate and produce the document. Charlotte will write a letter to explain the outcome which will meet the deadline of 23 April 2013 and request a halt in proceeding to allow the declaration to be fully executed and filed. I said we would consider this under r28(1) and allow a short period for this step.

267 22 March 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We refer to the applicant s application for production of documents and supporting declaration of Maggie Heasman dated 25 February We have reviewed the application and consider the grounds and circumstances provided justify the request for production of the document required in the proceeding. We note a copy of the unsigned document was provided as exhibit MH2-1 to the first Heasman declaration. Accordingly, we give notice to the opponent that we require the production of the document identified by the applicant as a signed copy of the strategic alliance between NZICA and CIMA executed in The document will need to be provided in a format which meets the requirements of section 160(1). The deadline for your response is 23 April If you have any questions, please contact me. Yours sincerely Helen Baxter Hearings Case Officer DDI: For the Commissioner of Patents, Trade Marks, and Designs

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288 IN THE MATTER of the Trade Marks Act 2002 AND IN THE MATTER AND of Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in Classes 9, 16, 35, 36, 41, 42, 45 in the name of The Chartered Institute of Management Accountants an Opposition thereto by the New Zealand Institute of Chartered Accountants Application for Direction to Produce Document DATED: 8 March 2013 Henry Hughes Phone: (04) Facsimile: (04) elena@henryhughes.co.nz P O Box 356 Wellington Ref: E J Szentivanyi

289 2 APPLICATION is hereby made by THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS ( CIMA or Applicant ) for a notice or other direction pursuant to Regulation 31 of the Trade Marks Regulations 2003 requiring that the New Zealand Institute of Chartered Accountants ( NZICA or Opponent ) file with the Commissioner, and provide to the Applicant, a signed copy of the strategic alliance agreement between NZICA and CIMA executed in 2006 ( the Agreement ), in a form that satisfies section 160(1) of the Trade Marks Act 2002, upon the following grounds: Requirements that must be established by CIMA 1. The requirements that must be established by CIMA before the exercising of the Commissioner s power under Regulation 31 of the Regulations to require a party to produce documents were discussed in Cure Kids v National SIDS Council of Australia Ltd [2011] NZIPOTM 13 1 ( Cure Kids 1 ) and in Cure Kids v National SIDS Council of Australia Ltd [2012] NZIPOTM 32 2 ( Cure Kids 2 ). 2. In light of Cure Kids 1 and Cure Kids 2, CIMA must establish: 2.1. the copy of the document that is required to be produced by NZICA is in NZICA s control 3 ; 2.2. the document relates to a matter in question in these proceedings 4 or are arguably relevant to the proceeding 5 ; 2.3. the document has been identified with sufficient specificity so as to satisfy the Commissioner that the document is in existence 6 and that the request for the production of documents is not a form of discovery 7 ; 2.4. the production of the document will not unreasonably prejudice NZICA in a way that cannot be mitigated by CIMA 8 ; and 2.5. the documents are to be used only for the purpose of these proceedings Further, CIMA must convince the Commissioner that the overall justice of the case favours the making of the notice or direction 10. A copy of the Agreement is in NZICA s control 4. A copy of the Agreement between NZICA and CIMA is likely to be in NZICA s control. Further particulars regarding the Agreement, including the reasons why CIMA no longer has a copy of the executed agreement, are contained in the Statutory Declaration of Maggie Heasman dated 25 February 2013 ( the second Heasman declaration ). 1 At At 9. 3 Cure Kids 1, at 27.1, and Cure Kids 2, at Cure Kids 1, at Cure Kids 2, at Cure Kids 1, at Cure Kids 2 at Cure Kids 1, at Cure Kids 2, at Ibid, at footnote 6. 2

290 3 The Agreement relates to matters in question in these proceedings and is arguably relevant 5. The Agreement relates to matters in question in this opposition, namely: 5.1. the Opponent s prior acceptance and acknowledgement of the trade mark at issue in this opposition; 5.2. the history of use of the trade marks owned by the Applicant and the Opponent; 5.3. the circumstances surrounding use of the trade mark at issue in this opposition; and 5.4. whether there is a real, tangible danger that deception or confusion will result from registration of the trade mark at issue in this opposition. The Agreement has been clearly identified 6. The document to be produced has been clearly identified. This request for the production of a document is not a form of discovery. Further information regarding the Agreement is contained in the second Heasman declaration. NZICA will not be unreasonably prejudiced by the production of the Agreement 7. Production of the Agreement will not unreasonably prejudice NZICA. If NZICA is unreasonably prejudiced by production of this agreement, mitigation by CIMA is highly likely to be possible. 8. CIMA will use the document only for the purpose of these proceedings. The overall justice of this case favours the making of the direction 9. It is in the public interest that all relevant documents and information are placed before the Commissioner in determining these opposition proceedings. As stated above, the Agreement is relevant to these proceedings. 10. It is in the public interest that the opposition proceedings are determined in a just and expeditious manner. Production of the Agreement will assist in the just and expeditious determination of these proceedings. 11. This application is reasonable and is necessary. DATED this 8 th day of March 2013 Per: THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS HENRY HUGHES Agents for the Applicant 3

291 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 FILED ONLINE Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) 8 March 2013 The Commissioner Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 NEW ZEALAND The Chartered Institute of Management Accountants Opposition to New Zealand Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants We enclose herewith an application for a notice or other direction from the Commissioner, pursuant to Regulation 31 of the Trade Marks Regulations 2003, for the production of a document by the Opponent, and the second declaration of Maggie Heasman in support of that application. Yours faithfully THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS HENRY HUGHES Agents for the Applicant Cc: Kensington Swan Barristers & Solicitors PO Box Wellington Attention: Charlotte Henley Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

292 25 February 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Deadline for Filing Submissions for Hearing The Office has set a date for the hearing between the above parties. The hearing is set for Tuesday 26 November The hearing will commence at 10am in the Office Board Room. Submissions are to be provided prior to the hearing so they may be passed to the Assistant Commissioner. The deadline for filing submissions is 22 November Under regulation 126, the hearing fee is required no less than 10 days prior to the hearing date. Please contact me if you have any questions. Yours sincerely Helen Baxter Hearings Case Officer DDI: For the Commissioner of Patents, Trade Marks, and Designs

293 OUR REF: V13010 EJS.EWB.PS YOUR REF: Case No. 668 / IP No FILED ONLINE 22 February 2013 Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) The Commissioner Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 NEW ZEALAND Proceedings 668 Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in the name of The Chartered Institute of Management Accountants and Opposition thereto by the New Zealand Institute of Chartered Accountants 1. We refer to the Commissioner s letter of 7 January We advise that the Chartered Institute of Management Accountants wishes to be represented at the hearing. 3. We note that the earliest available date is 26 November 2013 and we look forward to receiving confirmation of the hearing date in due course. Yours faithfully HENRY HUGHES Elena Szentivanyi Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

294 22 February 2013 Filed via online correspondence The Commissioner of Trade Marks Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 Trade mark application no The Chartered Institute of Management Accountants - opposition thereto by New Zealand Institute of Chartered Accountants Proceeding No We refer to the Hearings Officer s letter of 7 January The opponent, New Zealand Institute of Chartered Accountants, wishes to be represented at the hearing, and confirms the acceptability of the proposed hearing date of 26 November Yours faithfully Kensington Swan Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Solicitor Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com Copy: Elena Szentivanyi, Henry Hughes

295 7 January 2013 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Proceeding Correspondence We acknowledge receipt of the second statutory declaration of Richard Brandon Moon, dated 20/12/2012, with 1 exhibit. The opponent s evidence in reply is now completed. The case is ready to be decided. We ask the parties to confirm how they wish to have the matter decided: On the papers filed no fee; By written submissions fee required; Attendance at a hearing fee required. We advise the parties that the earliest date in the hearings calendar is 26 November We ask the parties to confirm how they wish to have the case decided by 22 February Yours sincerely Helen Baxter Hearings Case Officer DDI: For the Commissioner of Patents, Trade Marks, and Designs

296 20 December 2012 Filed online The Commissioner of Trade Marks Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 Attention: Julie McCarthy - Hearings Office New Zealand Institute of Chartered Accountants Opposition to trade mark application no THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in the name of the Chartered Institute of Management Accountants (Our Ref: NZS137/755) We attach the second statutory declaration of Richard Brandon Moon as evidence in reply in support of the above opposition. This completes the opponent s evidence in reply. Yours sincerely Charlotte Henley Partner Wellington Alternative contact: Leigh Burgess Solicitor Wellington P: P: E: charlotte.henley@kensingtonswan.com E: leigh.burgess@kensingtonswan.com CC: Elena Szentivanyi, Henry Hughes (Your Ref: V13010.EJS)

297 In the matter of the Trade Marks Act 2002 And In the matter of Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in classes 9, 16, 35, 36, 41, 42 and 45 in the name of the Chartered Institute of Management Accountants And An opposition by the New Zealand Institute of Chartered Accountants Second Statutory Declaration of Richard Brandon Moon in Support of Opposition Dated 'ā0 December 2012 KENSINGTON SWAN 89 The Terrace PO Box Wellington 6143 Solicitor: C A Henley Ph Fax DX SP26517

298 I, Richard Brandon Moon, of Wellington, solemnly and sincerely declare as follows: 1. I am the General Counsel for the New Zealand Institute of Chartered Accountants (the 'Institute'). I have already made one declaration in this matter, and I make this second declaration in reply to the evidence filed in support of the application. 2. Unless otherwise indicated, I have full knowledge of the facts set out in this declaration either through my own personal knowledge or from the records of the Institute to which I have access. I am authorised to make this declaration on behalf of the Institute. 3. I have read the Statutory Declaration of Sam McQuilkan dated 6 December 2012, including the exhibits to his declaration (the 'BM Declaration'), and respond as follows. 4. I refer to paragraph 4 and exhibits SM-1, SM-2, and SM-3 of the SM Declaration. I have reviewed the Google results of the search terms "Institute Chartered", "Chartered Accountant" and "Chartered Institute Accountant" and note that all of those results in relation to accounting services refer to either the Institute, or its members, aside from one reference to CIMA Chartered Institute of Management Accountants. 5. I have read the Statutory Declaration of Maggie Heasman dated 4 December 2012, including the exhibits to her declaration (the NH Declaration'), and respond as follows. 6. With regard to paragraph 10 of the MH Declaration, my understanding is that CIMA is a UK based organisation and that the vast majority of its members are based in the UK, with only a relatively small number in New Zealand. 7. Paragraph 11 of the MH Declaration states that CIMA has branches in Auckland, Wellington and Christchurch. In December 2012, I visited CIMA's website at and selected New Zealand as my place of origin. I was unable to locate any reference to CIMA having physical 'branches' in Auckland, Wellington or Christchurch and I am not aware of any such physical 'branches'. I was only able to locate reference to a PO Box in New Zealand from the CIMA website. Attached and marked RM(2)A is a screen shot from CIMA's website at In addition, I telephoned the helpline number provided by CIMA for New Zealand members and was put through to a person who said they were located in Sydney. 8. Paragraph 13 of the MH Declaration states the following: "I understand that NZICA's formal change of name to the New Zealand Institute of Chartered

299 Accountants occurred following the passage of the New Zealand Institute of Charted Accountants Amendment Act 2010." However it is important to note that the Institute used the mark NEW ZEALAND INSTITUTE OF CHARTERED ACCOUNTANTS, including as its trading name, since Paragraph 14 and exhibit MH-6 of the MH Declaration attached an undated and unsigned agreement between the Institute and CIMA. Prior to receiving a copy of the MH Declaration I was not aware of the existence of such an agreement and, in my role with the Institute since 2009, I have never had this Agreement brought to my attention. 10. Paragraphs 14, 15, 16 and exhibit MH-6 of the MH Declaration refer to an 'alliance' between CIMA and the Institute. The Institute has a large number of alliances with accounting organisations throughout the world, including through the Global Accounting Alliance ('GAA'). However the Institute would have concerns if any such international accounting organisations sought to register as a trade mark in New Zealand any mark that is confusingly similar to a mark of the Institute. Further the extent of any association between the Institute and CIMA in New Zealand has, to my knowledge, been on a limited, case by case basis. 11. It is my understanding that any co-branded publications (such as exhibit MH-15) released in New Zealand by both CIMA and the Institute has included the CIMA logo or word CIMA together with the words CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS, rather than the mark CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in isolation. 12. Paragraph 17 of the MH Declaration states that "It is apparent that NZICA has been aware of and consented to use of the mark CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in New Zealand since 2006." The Institute has not, and does not, consent to the use or registration in New Zealand of the mark CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS in isolation. I make this solemn declaration conscientiously believing the same to be true and by virtue of the Oaths and Declarations Act Declared at Wellington this Z04 t' December 2012 before me: day of Richard Brandon Moon A Solicitor of the High Court of New Zealand Alaister John Moughan Solicitor Wellington

300 Y L --sboonieflovide this ruse age. CIMA Chartered Institute of Management Accountants Select your location Jobs 01.1 Liztgazkle at,t4spere comm,ity CUM Home Study with us Students Members CIMA in business Events mid CPD courses Innovation Professionalism About us '1=.412EAM.:? toratg - Zeaion Welcom o CIMA New Zealand See the links to the right for all our latest news and events In the region. You can contact CILIA New Zealand directly at newzealend@cunagtobal corn or our CIMA contact tuny New Zealand ) News ) Member benefits ) Australasmn regional bsol rt'aileg_elfeame:_efillshitisei Sign up now and save the brains behind the business Sign up n adttrthstudvuttorjuutcdcp7s Sytce end ol 2012 anti pay no subscription fee until You could also win a prize! Lind out rrtgre. Talk to a personal adviser Prospective students can call us on ; from 7pm is 7am (Chatham Islands 19:45.07:451, Monday In Friday and from gpm Is 3arn cn the first and third Saturday of each month Alternatively send us an to callback@mmanlohal ann with your name, contact details and a con tent time for OS to call you back Exemptions Start your studies 'nith the cirm certificate in business accounting. If,ou already have a degree, you moo be exempt snore CILIA Darters Discussion Join our online community CILLA.sultere and share information and expertise With peers. See the Mew Zealand rhotig. Fast track for MBAs CIMAsphere discussion forum Building successful finance careers Contact Us CIMA New Zealand PO Box Wellington 5142 New Zealand A free series of webcasts available to view stippuryd try IROber Tel -54 (0) CILIA M2 (246289) (NZ freephone) Fax: -'64(0) newv hndwcim-b ow Fast track route into CIMA for COM nuns fast track route Is the professional qualification tor students Get involved on the Sphere... I Join our sludentrilscussion boards THIS is the Exhibit marked RM(2)A referred to in paragraph 7 of the attached statutory declaration of Richard Brandon Moon DECLARED at Wellington this 2 th day of December 2012 before me: A Solicitor of the High Court of New Zealand Alaister John Moughan Solicitor Wellington

301 this ollor At..doolkfif *hide this ineos see Pilaw coowes 3T2Ikif-Tr CIMA Chartered Institute of Management Accountants Select your tucat,unst. Jobs Fht Maga a CedAspnere community CUM Search Home Study with us Students Members CIMA itt business Events and CPD courses Innovation Professionalism About us ) New Zealand Welcometo CIMA New Zealand See the links to the right for all our latest news and events In the region. You can contact cima New Zealand directly 01 netizealand@cimaglobal corn or entail our CIMA contsc! tt t.. =11=1111- New Zealand Ne. dentheor benel.ts /\usfrztiasian rogicaal boats." c. -rrtree)r e.rb:o!eit Lsfl4fasct Sign up now and save Se lire Brains tao gusiness Sign spas a CILIA student for just OSP70 by the end ol 2012 and pay no subscription fee until You could also win a prize! Find out more Talk to a personal adviser Prospective students can call no on +44(0( from 7pm to 7am (Chatham Islands 19:45-07:45). Monday to Friday and from gpm to 3arn on the first and third Saturday month. Alternatively send us an to callhack@mmanlonal cnm with your:lame, contact details and a convenient time for us to call you back Exemptions Start your studies with the CIMA certificate in business accounting. It you atteady have a , you mar be exempt from oenrvcllllirrsneru Discussion Join our online community ClIeRsphete and share infonnation and expertise with peers. See the New 7,palanir truss. Fast track for MBAs CIMAsphere discussion forum Building successful finance careers Contact Us CIMA New Zealund PO Box Wallington mu Zealand Tel. +04 (0) or 0800 MANZ (246269) (NZ freephone) Fay b4(0( A A free series " of webcasts available to view sepperied by nevaealandfitimaolobal.com 1,11tRo1)ert 1-1a11. CILIA buss fast track route professional qualification for students wan an MBA. See our ORA route oaae for everything you naiad to Know. Get involved on the Sphere-, > Join our student discussion boards > Join not Member glgeti&sion hoards arili Islamic finance Find us on :En Explore clmaglobalcom,nhy You should choose c -"A Contact us mint contacteschanintalcnm > Or fog your bent Cook voice Study with us Students Members CIMA in business > Ala Once: Tees, cornotteon the > Entry levet 2011 certdtate in Secorrang a mentor CMS, cable In PM panne sector trustless eccuuntto > Why choose CS1A? BeCorning a CGMA CRIA vame in rho pubic sector > 2010 professional guathcation > Entry mutes 1 Fees and bayroent > CtiiA sate In grouts hostesses > Student taaa > Exemptions CNA profesafonaldevetpritnt > CNA development scheme AZ exam award htinns > Register as a student > Mentors' handbook > CNA trobte aceredttalian > CNA destnatory letters > tnturr0u finance guestkatiens Finds COCA abcauntant > COMA > Begetting a COMA rub CNA > Tubas provider > new Mgalbala > Exams > Boost your salary > Financial!denouement mandate, CILIA pubtahing > Student and member pm > tdomiarkng otmenters ton m > Online CSAAStUrly gractsting accountants > Study for a degree through CEAA > CgdAplus > Becoming a come. min crita About us > Way VIJA7 > Our fission, behaviours and strategy Cebraleln SO years >CPCA case studios and protka y GnyernanCe. Charlet and byestws > Press office O AgvergSa wen us y Partnere > JoboalCbti What is management accountign? > 2011 annual review FA0.1. conteet irs Tvrns & conditians Friv2ai polity Ceakie achy/ Sitengeo Acctglibilgy hr a ra STRATToK g4s0500t ACgatftiTaiO AgigignAt KWACT MAMAGE141:1 OGeMONT agogilitig 1111IriO S501EMSAOIS fitottg,;tti,s

302 17 December 2012 HENRY HUGHES PO Box 356 Wellington 6140 New Zealand Reference: T34570 EJS.NK Kensington Swan PO Box Wellington New Zealand Reference: NZS137/755 Proceeding: 668 IP Number: Owner: The Chartered Institute of Management Accountants Opposition by New Zealand Institute of Chartered Accountants Deadline for Opponent to File Evidence in Reply We acknowledge receipt of the applicant s evidence, being: 1. Statutory Declaration of Maggie Heasman and 15 exhibits 2. Statutory Declaration of Sam McQuilkan and 8 exhibits This completes the applicant s evidence. The deadline for the opponent to file evidence in reply is 6 January If you have any questions, please contact me. Yours sincerely Julie McCarthy Hearings Case Officer DDI: For the Commissioner of Patents, Trade Marks, and Designs

303 OUR REF: V13010 EJS.EWB.PS YOUR REF: FILED ONLINE Principals: M. DOUCAS* B.Sc. LL.B. M.C. EFTIMOV* N.Z.C.E. F.G. CALLUS* B.Sc.(Hons) C.P.A. B.M. SULLIVAN* B.A. LL.B. M.I.T.M.A. E.J. SZENTIVANYI* LL.B. * Registered Patent Attorney (Australia) Registered Patent Attorney (New Zealand) Registered Trade Mark Attorney (Australia) 6 December 2012 The Commissioner Intellectual Property Office of New Zealand PO Box 9241 Marion Square Wellington 6141 NEW ZEALAND The Chartered Institute of Management Accountants Opposition to NZ Trade Mark Application No THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS by the New Zealand Institute of Chartered Accountants We attach the statutory declarations of Maggie Heasman and Sam McQuilkan in support of Trade Mark Application No This completes the applicant s evidence. Yours faithfully HENRY HUGHES Elena Szentivanyi / Edward Butler Encls. Cc: Charlotte Henley Kensington Swan Level 9 89 The Terrace Wellington Henry Hughes Ltd, PO Box 356, Willis Street, Wellington, New Zealand hh@henryhughes.co.nz, Website Telephone , Facsimile Associated law firm Henry Hughes & Co

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