The IPONZ decision between New Dawn International Ltd and Nick Williams [2012] NZIPOTM (19 March 2012) demonstrates that unless there is a causal connection between the original works and another works that is of a similar nature, an application for the declaration of invalidity of the other similar works will be declined. W claimed that NDIL is not entitled to use the relevant mark because he owns the copyright in that mark. The Court noted that three elements must be satisfied for an infringement by reproduction to be found. First, the reproduction must be of the entire work or a substantial part of it, secondly, there must be sufficient objective similarity between the infringing work and the copyright work, or a substantial part thereof and lastly there must be some causal connection between the copyright work and the infringing work.
The Court noted that the closer the similarity between the two works the stronger the inference is likely to be that one was copied from the other. However, the judge found that there was, in fact, no evidence to establish that there was any causal connection between W’s work and the relevant mark. Therefore, W failed to establish grounds of invalidity under s17(1)(b) of the Trade Marks Act 2002.