The Intellectual Property Office of New Zealand (IPONZ) has recently implemented some changes to their procedures in trade mark proceedings. These updates are summarised below:
- Trial period for new hearing scheduling initiative
IPONZ has recently been trialling a new scheduling initiative for hearings, in which parties can volunteer to go on a short list for back up fixtures that become available at short notice.
A written request needs to be lodged with IPONZ to be placed on the shortlist and all parties to the proceedings must consent.
If you are placed on a shortlist and are allocated a fixture date, you will be given a minimum notice period of 20 business days, and accelerated deadlines to file and serve submissions.
While parties can still request alternative hearing dates, continual postponement of the hearing date can result in the removal of the scheduled hearing from the shortlist. Should this occur, the proceedings will be allocated a hearing date within the standard timeframes.
The trial period started on 1 April 2021 and will end on 30 September 2021.
- Use of electronics bundles at hearings
Currently, IPONZ requires each party to file a physical copy of all pleadings and evidence in a single document known as the “common bundle”, prior to a hearing taking place.
IPONZ are now starting to transition to electronic bundles.
For the time being, as this procedural change is still in transition, IPONZ will inform the parties whether an electronic and/or physical copy of the hearing documents are required.
- Confidential evidence
IPONZ has updated their procedures on the treatment of confidential evidence. Parties are now required to reach an agreement on what constitutes confidential evidence and how it should be treated and disclosed before the relevant party's deadline for lodging their evidence.
IPONZ will allow a one-month halt in proceedings if more time is needed by the parties to finalise these discussions.
Failure to reach an amicable decision after this period may result in one of the following actions:
- IPONZ will make a proposed decision on how the confidential evidence is to be treated; or
- A case management conference will be scheduled.
A party can also request an interlocutory hearing if they believe they will be adversely affected by the proposed decision of IPONZ.
- Costs awards
In trade mark proceedings, the general practice is for the Assistant Commissioner to award costs against the unsuccessful party.
Where multiple proceedings are on foot, but which are substantially identical in their content, the practice was to award only one fee per step taken by the successful party. This means that the costs award would be the same, regardless of the number of cases included in the proceedings.
The new practice is to provide the successful party an additional 20% of the total costs award (excluding disbursements) for every additional, and substantially identical, proceeding after the first.
A cost award can now also be made against an unsuccessful party who does not take any steps in invalidity proceedings. However, costs generally will not be awarded in uncontested revocation or opposition proceedings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.