80. As regards the consideration of genericness during the application process and when a protected term was challenged, the representative of New Zealand said that his country had a dual system for obtaining protection: firstly through registration of a trademark or a certification mark; and secondly under the general law on consumer protection and competition.
81. With regard to registered certification marks, during the application for protection of a term, the burden was on the applicant to satisfy the examiner that there were no grounds that would prevent registration, such as genericness. The applicant had to prove, through written submissions based on case law or evidence of use during the application process that the term was non-generic.
82. The question of genericness could also be raised by the examiner or by interested third parties who had an opportunity to oppose the registration. The failure of either of those parties to raise genericness would not, however, absolve the GI owner from having to prove that the term was non-generic and deserved protection. If, during the application process, the examiner became aware of a possible issue of genericness as a result of his or her own research, then the examiner would inform the applicant and would reference the relevant source of information. As stated previously, the onus of proof was on the applicant to establish that the trademark was eligible for registration, including that it was non-generic.
83. In the case of third parties, the grounds for opposing an application had to be raised in a signed notice of opposition, supported by evidence. The onus of proof remained on the applicant to establish eligibility for registration, including non-genericness.
84. In relation to the protection of unregistered trademarks and geographical indications through general consumer protection law and competition law, the GI owner bore the burden of proving that the term was not generic. The party opposing protection could provide evidence of genericness if it wished, but failing to do so would not absolve the GI owner from having to prove that the term deserved protection.
85. Finally, in response to part b of the second sub-question, i.e. where a term was already protected, he said that in that case it was still possible in New Zealand for that decision to be challenged and in that situation the burden of proof was actually reversed: the person challenging that protection on the grounds of genericness or any other reason had the burden of making out a prima facie case that the term was not originally registrable.
