Shine Lawyers v No Win No Fee Kiwi Limited (IPONZ Case 8149)
Shine Lawyers Pty Ltd (via its trade mark agent, IP Wealth Pty Ltd) filed an application under the Trade Marks Act 2002 to revoke No Win No Fee Kiwi Limited New Zealand's trade mark registration No. 1107147 ("NO WIN NO FEE KIWI"). No Win No Fee Kiwi Limited filed a counterstatement and evidence of use. Shine Lawyers then withdrew the revocation.
What Shine Lawyers filed (and why)
The revocation application was made on two grounds:
- Section 66(1)(a) - non-use (the claim being that the mark was not used in the relevant three-year period).
- Section 66(1)(c) - "common name" (the claim being that the mark has become a common name in general public use).
In their application, Shine Lawyers also said they were an "aggrieved person" because they had filed New Zealand trade mark applications seeking to register "No Win, No Fee No Nonsense" and No Win No Fee Kiwi Limited's registration was cited as an earlier mark against them. Shine Lawyers also said they claimed that No Win No Fee Kiwi Limited's trade mark "No Win No Fee Kiwi" was no longer in use. Shine Lawyers said they were an "aggrieved person" because they had filed New Zealand trade mark applications (application numbers are set out in their filing) and our registration was cited as an earlier mark against them.
Timeline (based on the filed documents)
- 25 July 2024: Consent request from Shine Lawyers (via IP Wealth) (context referenced in later costs material).
- 10 December 2024: Application to revoke trade mark registration No. 1107147 filed by Shine Lawyers.
- 13 December 2024: IPONZ set the owner deadline to file counterstatement and evidence by 13 February 2025.
- 22 January 2025: No Win No Fee Kiwi Limited filed their counterstatement and affidavit evidence of use (with exhibits).
- 27 January 2025: IPONZ set the applicant evidence deadline as 27 March 2025.
- 27 March 2025: Deadline for Shine Lawyers to file applicant evidence.
- 28 March 2025: Shine Lawyers (via IP Wealth) signed a withdrawal of the non-use removal application.
- 1 April 2025: IPONZ issued a notice confirming the proceeding was discontinued.
- 2 April 2025: Owner request for costs lodged (per IPONZ correspondence).
- 4 April 2025: IPONZ costs correspondence; owner further submissions deadline set as 4 May 2025.
- 28 April 2025: IPONZ set the applicant deadline to comment on costs as 28 May 2025.
- 4 July 2025: IPONZ issued the costs determination / order.
No Win No Fee Kiwi Limited's response: counterstatement and evidence
No Win No Fee Kiwi Limited's counterstatement denied the allegation that the trade mark was not used in the relevant period, and denied the allegation that the mark had become a common name. No Win No Fee Kiwi Limited said the mark had been used in the relevant period, including:
- On No Win No Fee Kiwi Limited websites.
- On No Win No Fee Kiwi Limited Facebook page.
- In print media (articles in "Deals on Wheels") that were also published on No Win No Fee Kiwi Limited websites.
- On the No Win No Fee Kiwi Limited Google Business profile (noting it was later suspended by Google in April 2024, outside No Win No Fee Kiwi Limited's control).
- and woke media news stories publishing "No Win No Fee Kiwi".
The evidence was set out in an affidavit (with annexed exhibits) explaining the use of the mark, including screenshots and dated records.
Key documents (download)
No Win No Fee Kiwi Limited are publishing the core documents from the proceeding. These are the documents that show the "application form versus evidence burden" problem in practice.
1) Shine Lawyers application for revocation (non-use)
This is the application filed under the Trade Marks Act 2002. It identifies the mark (No. 1107147), states the grounds (s 66(1)(a) and s 66(1)(c)), and asserts Shine Lawyers is "aggrieved" because their NZ applications were being blocked.
Open PDF2) No Win No Fee Kiwi Limited's counterstatement
This is No Win No Fee Kiwi Limited's formal response. No Win No Fee Kiwi Limited denied non-use, set out that the mark was used in the relevant period, and deny the "common name" allegation under s 66(1)(c).
Open PDF3) Affidavit evidence of use (22 January 2025)
This is the affidavit filed (exhibits are not included). It sets out the No Win No Fee Kiwi Limited evidence supporting continued registration, including use on websites, social media, and published content, and explains the relevant period considered.
Open PDF4) Withdrawal of the revocation / non-use removal
This is the signed withdrawal by IP Wealth as trade mark agent for Shine Lawyers. In short: Shine Lawyers commenced the proceeding, No Win No Fee Kiwi Limited responded, and Shine Lawyers discontinued it.
Open PDF
