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Deficient counterstatement permitted; but opponent prevails regardless

The Intellectual Property Office of New Zealand has refused registration of the trade mark (“the Ara Toa logo”) in Class 25 for shoes, following an opposition by Ara AG, a German footwear company with a long-standing presence in New Zealand and successfully represented by Henry Hughes IP.

The decision¹ found that use of the Ara Toa logo would be likely to deceive or cause confusion, because of the opponent’s prior rights in the trade mark “ara”. The decision also explores how practitioners and the Trade Marks Office might handle deficient pleadings.

Background

Applicant: JNJ World Trading Ltd, incorporated in 2021, sought to register the Ara Toa logo for various types of shoes.
Opponent: Ara AG, owner of multiple “ara” trade mark registrations, including the ara word mark in class 25 for footwear, and class 35 for wholesaling and retailing of shoes and related goods. The Assistant Commissioner found, on the evidence, Ara AG has sold shoes in New Zealand since 2009 and has a reputation in its “ara” mark.
The opposed mark, , combines two Maori words with a suggested meaning of “Brave Path,” and includes a shoe device. JNJ did not file evidence, and ‘outside of the ARA TOA application there is no information about JNJ’s business’.

Grounds of Opposition

Ara AG relied on two statutory grounds:

Section 25(1)(b): The applied-for mark is similar to Ara AG’s registered ara marks for the same or similar goods, and its use would likely deceive or confuse.
Section 17(1)(a): Use of the mark would be likely to deceive or confuse, given Ara’s reputation in New Zealand.

The Opponent argued, “the phrase “Ara Toa” does not convey a particular meaning to ordinary New Zealand consumers”, and “even if a number of consumers understand one or more meanings of the words ‘ara’ and ‘toa’ as individual Maori words, we have seen no evidence that a substantial number would understand “Ara Toa” as ‘hanging together’ with a distinct meaning – so much so the risk of confusion is significantly mitigated.”

Similarity Analysis under s 25(1)(b)

The decision applied the three-step order of enquiry:

Are the goods of the respective parties the same or similar? Both marks cover footwear, therefore the goods are considered identical or highly similar.
Are the marks similar?
- In look and sound? “Ara” is wholly incorporated in the Ara Toa logo, and both marks begin with the word “ara” – making them similar in look and sound. The capitalisation of “Ara” and additional word “Toa”, distinguishes it as comprising two separate words.
- In their idea? For most New Zealand consumers, neither mark conveys a clear meaning. For te reo Maori speakers, both share the idea of “path,” creating conceptual overlap.
- In their overall impression? Overall, the differences do not outweigh the common element, and the marks have a moderate degree of similarity.
Likelihood of Confusion?
- The footwear goods and services intended to be promoted are notionally the same: Same goods, same trade channels, same purchasing context.
- The prominence of “Ara” in both marks increases the risk consumers may assume a connection.

The Assistant Commissioner noted, “the Te Aka Maori Dictionary has definitions for “ara” and “toa” that are consistent with the above description. The combination of “ara toa” is not defined in the dictionary.” And, recalling his own experience as a footwear consumer, found “not being a te reo Maori speaker (his impression is) that neither trade mark has a clear meaning.” The Assistant Commissioner concluded:

“For consumers who do not speak or understand te reo Maori it is likely there is no meaning conveyed by either trade mark."

“For te reo Maori speakers “ara” in both marks may be understood as path, and “toa” in the JNJ mark as brave. Based on the combination of meanings, “ara toa” may be understood as “brave path” or similar, such as “path of courage”. In that case the meaning “path” is common to both marks.”

“Looking at the respective trade marks as a whole, taking account of the look, sound and idea of the marks I consider they have a moderate degree of similarity.”

Result: In New Zealand, the onus is on the applicant to show that there is no basis under section 25 to refuse the application. JNJ failed to show that confusion was unlikely. The s 25(1)(b) ground succeeded.

Reputation and s 17(1)(a)

The Assistant Commissioner found that Ara AG’s evidence demonstrated a modest but consistent presence in New Zealand through sales and advertising since 2009. The threshold for reputation is low, and the evidence was sufficient. Given the similarity of marks and goods, and Ara’s reputation, the AC found deception or confusion likely.

In New Zealand, the initial onus is on the opponent to establish an awareness of its mark in New Zealand. The onus then switches to the applicant to establish that use of its mark would not be likely to cause confusion. The s 17(1)(a) ground also succeeded.

Outcome: The trade mark application for the Ara Toa logo was refused.

Preliminary Pleading Challenge

What sets this decision apart from others is the Assistant Commissioner’s discussion of how the regulations pertaining to opposition pleadings play out in a practical sense – particularly where DIY trade mark filers and self-represented parties are involved. There is a tension between ensuring that natural justice is followed, whilst allowing for efficient and cost-effective proceedings.

Ara AG argued JNJ’s counter-statement was deficient - lacking specific responses to each ground of opposition, lacking a supporting statement, and lacking a signature. On the basis that a compliant counterstatement was not filed within the prescribed deadline, the opponent sought that the application be deemed abandoned under s 48(2).

The AC noted the statement in support of the application is important for putting the opponent on notice of how the applicant will defend the application, and is of fundamental importance if the applicant intends to rely on exceptions to grounds of opposition – for example honest concurrent use or special circumstances under s26(b).

The Assistant Commissioner dismissed the opponent’s objection to the counterstatement, finding:

JNJ did file a counter-statement, albeit imperfect;
The challenge was raised too late (only in written submissions);
Minor non-compliance (e.g., missing signature) could be waived under regulation 164;
This is not to say a deficient “counterstatement” might never be rejected, but in this instance the act of filing a deficient counterstatement was enough to meet the regulatory obligation to file a counterstatement within the prescribed time (thereby avoiding automatic abandonment of the application); and
the Applicant positively identified its case with the wording “our trade mark is unique, culturally significant, and sufficiently distinct from the Opponent’s marks to avoid any likelihood of confusion” despite not explaining or giving evidence of the mark’s meaning, how they created the mark, or otherwise supporting their claims.

Multiple trade mark and patent decisions in recent years have turned on the scope and accuracy of pleadings, and the AC noted the Court of Appeal in Vibrac SA v Merial (2014) 110 IPR 224 observes “the notice of opposition and counter statement have the same purpose as pleadings” and inform the Assistant Commissioner and the parties of the material facts and issues.

In this instance, the Assistant Commissioner identified the basis on which the lack of signature could be excused by the Case Officer, and the response to assertions and statement in support allowed, and regulation 123 grounds for requesting a hearing on this decision, noting:

“Self-represented parties do not get any leniency beyond the help and assistance the Hearings Office provides to all parties. Seekaserv Global Ltd v Seek Ltd [2024] NZIPOTM 22 at [20] “… The same rules and requirements set out in the Act and Regulations must apply equally to everyone, regardless of whether they engage representation or not …”

He endorsed the Hearings Office’s approach and stated that the counter-statement met requirements “by a fine margin”, explaining “Strictly applying the regulations to a notice of opposition or counter-statement can have disproportionate consequences.”

The Assistant Commissioner suggested that, going forward, Case Officers could identify for the parties when they are relying on reg 164, and opponents could then seek to be heard on the decision to accept the counter-statement.

And also, Case Officers need to consider the impact of allowing or denying information as unnecessary, and only small deficiencies in information which do not make a difference to identifying grounds of matters are to be treated as unnecessary.

Key takeaways:

Cultural elements: In this case, the two trade marks were found to be confusingly similar irrespective of whether the potential consumer was a te reo Maori speaker. However, the AC observed that: “Those who speak or understand te reo Maori cannot be dismissed as an insignificant or de minimis number of purchasers who may potentially deceived or confused”.
Similarity test: The AC noted that “[t]here is no rule deception nor confusion will occur where one mark is subsumed in another. On the other hand where the common part is distinctive and has it own identity in both marks this tends to point to a likelihood of deception or confusion”. In particular, common elements at the start of a mark carry significant weight.
Blanket denials in counterstatements are poor practice and may have cost implications.
Drafting pleadings requires expert guidance: Though trade mark applicants and owners may receive excellent customer service from IPONZ and find them helpful, there are limits to this service. IPONZ recommends that parties engage specialist attorneys for opposition proceedings.
Objections to pleadings should be raised early. IPONZ may adopt a proportionate approach to minor deficiencies, and any issues with pleadings should be raised promptly to avoid wasted costs.

We urge trade mark owners to seek out an experienced IP professional to respond to IPONZ trade mark examiners, and particularly matters before the Hearings Office or courts. The earlier the better. Both to make full use of their insights on strategy, and help IP rights holders put their best case forward.

Tanya Carter and David Moore – December 2025

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1. IPONZ Decision: Ara AG v JNJ World Trading Ltd [2025] NZIPOTM 24.