Pre-hearing directions

What are pre-hearing directions? 

Once the evidential rounds of proceedings are concluded, the Commissioner has the power to issue directions to make arrangements for the hearing pursuant to regulations 124(2)(c) and (e) of the Trade Marks Regulations 2003.

Purpose of standard pre-hearing directions

The purpose of the Commissioner’s standard pre-hearing directions outlined below is to ensure hearings run efficiently and smoothly, and that any evidential or pleading issues are identified well in advance of the hearing. 

When the standard pre-hearing directions apply

In inter partes proceedings, where the parties have professional representation, the standard directions will apply unless the Commissioner advises otherwise. The Commissioner does, however, retain discretion to amend the directions in consultation with the parties to take into account the particular circumstances of a case. Please note that the Commissioner may choose to modify or dispense with the standard directions to accommodate self-represented parties who may not be comfortable with this level of formality.

The directions do not apply to undefended proceedings, or proceedings where both parties have elected to be heard on the basis of the papers as filed.

The Commissioner’s standard pre-hearing directions

The Commissioner’s standard pre-hearing directions are as follows:

Direction 1: Request for information from parties

Once the evidential stages of the proceeding are complete the Hearings Office will write to the parties setting a deadline of 4 weeks to:

• Indicate how they wish to be heard;
• Confirm who will be representing the party at the hearing, and of any likely additional attendees including additional representatives of the parties, other members of the firms representing the parties, or members of the public at large including reporters;
• Raise any evidentiary issues;
• Advise if any grounds or matters pleaded will not be pursued at the hearing;
• Indicate if the parties are pursuing settlement negotiations;
• Request consolidation of proceedings, or that multiple proceedings be heard together/consecutively; and
• Invite the parties to confirm whether they wish to placed on the shortlist for hearings to be heard at short notice.

Once this deadline has passed, the case will become ready for a hearing.

For more information, please see the following pages:

• How you can be heard
• Shortlist for hearings that can be held at short notice

Optional step: Case management conference may be required

Should the parties raise any issues in response to the Commissioner’s pre-hearing directions above, a case management conference may be convened to deal with them. Please note that case management conferences will be reserved for dealing with matters that are out of the ordinary, or for agreeing on hearing procedure.

Please see the case management guidelines for further information. 

Any issues with evidence or pleadings will, where applicable, be dealt with under the relevant regulatory processes, e.g. requests to file evidence out of time or to amend pleadings.

Direction 2: Setting of hearing date

If either party has elected to attend a hearing in person, the Hearings Office will write to the parties to advise of the hearing date. The Hearings Office will then set appropriate dates to allow for sequential filing of submissions, including for a party proceeding only on written submissions.

The Hearings Office will only offer alternative hearing dates if there are good reasons why a party is unable to attend the date offered. The Hearings Office will expect reasons to justify the need for an alternative hearing date and such requests will be considered on a case by case basis.

If both parties have elected to be heard by way of written submissions, they will be notified of the hearing date and deadline for payment of the hearing fee prior to passing the case to the Assistant Commissioner for their decision. The Hearings Office will set appropriate dates to allow for sequential submissions. The initiating party will be required to file their written submissions 5 working days prior to the hearing date, and the Applicant or Owner must file their written submissions on the hearing date.

If one party has elected to be heard by way of written submissions, and the other on the papers, both parties will be notified of the hearing date. However, only the party who is filing written submissions will be required to pay the hearing fee. Once the submissions have been filed by the relevant party, the case will be passed to the Assistant Commissioner for their decision.

Direction 3: Directions following setting of "hearings"

Once a hearing date has been scheduled the parties must comply as follows: 

Written submissions

1. Any written submissions are to be:

• No longer than 25 pages (this is not a target) of A4 size paper for substantive hearings;
• No longer than 10 pages (this is not a target) of A4 size for interlocutory hearings;
• Have line spacing no smaller than 1.5;
• Have legible type of not less than 11 point size;
• Submissions outside of these specifications are almost certain to have costs consequences, unless there are good reasons for why longer submissions are appropriate.

Bundle of documents (where a hearing is attended by at least one party)

2. For the common bundle of documents:

• It should include the body of the statutory declaration or affidavit being referred to, but otherwise is to be limited to the exhibits, documents, or parts of documents that will be referred to at the hearing;
• The volumes themselves should:
  • Be limited to a maximum of 250 pages in each volume;
  • Include an index;
  • Be paginated; and
  • Be bookmarked, including bookmarking all pleadings and evidence, with each individual exhibit bookmarked;
• The parties are expected to take a practical approach to the compilation of the bundle – for example, it should not be necessary to include:
  • Copies of hundreds of internet pages;
  • Copies of trade mark certificates and materials from other jurisdictions that are not relevant to the position in New Zealand;
  • Entire statutes, magazines, brochures, manuals, company annual reports and the like – if only one or a few pages are relevant, the front and back covers with the relevant pages should be sufficient;
• The parties must co-operate in the preparation of the common bundle, including:
  • Promptly telling the party responsible for the common bundle which documents or parts of documents are to be incorporated;
  • Taking steps to assist preparation of the bundle, such as providing copies of documents not readily available;
  • If there is a disagreement over the documents to be included in the bundle, the document or part should be included and the disagreement should be noted.
• A lack of cooperation and unreasonable or onerous requests for the inclusion of documents is almost certain to have costs implications;
• If documents or parts of documents are omitted from the common bundle this does not prevent a party from referring to it at the hearing.

3. The bundle of authorities must comply with the following requirements:

• It is to be limited to a maximum of 250 pages in each volume;
• It is to include an index and be tabulated;
• It does not need to include the frequently cited trade mark cases. However, frequently cited cases should be included if a party wishes the Commissioner to refer to the case during the hearing.

4. While a hearing is being scheduled, the Office will confirm with the parties whether a hard copy of the common bundle is required (in addition to the electronic copy), or whether the electronic copy will suffice.

The filing of the hard copy of the common bundle and the party’s bundle of authorities on the Commissioner is to be made by courier to:

Intellectual Property Office of New Zealand
Hearings Office
15 Stout Street
Wellington 6011
New Zealand

Please do not mark the courier for the attention of an individual case officer.

The parties must also adhere to the following deadlines prior to the hearing:

1. At least 20 working days before the hearing the parties must:
   • Consult on what is to be included in the common bundle of documents;
   • Inform the Hearings Office of any special hearings or technology requirements;
   • Inform the Hearings Office of the agent(s) representing it at the hearing and the names of any other peoples who wish to attend the hearing (if it has not already done so).
2. At least 10 working days before the hearing the initiating party is to:
   • File and serve a hard copy and an electronic copy of its submissions, which must identify any pleadings or evidential issues that will be raised at the hearing;
   • File and serve a hard copy of the common bundle;
   • File and serve a hard copy of its bundle of authorities.
3. At least 10 working days before the hearing, any party attending the hearing must pay the hearing fee. There is no provision for the late payment of the hearing fee.
4. At least 5 working days before the hearing the responding party must:
   • File and serve a hard copy and an electronic copy of its submissions, which must identify any pleadings or evidential issues that will be raised at the hearing;
   • File and serve a hard copy of its bundle of authorities it intends to rely on, which are not included in the initiating party’s bundle of authorities.

Failure to comply with pre-hearing directions

Any failure to comply with the Commissioner’s pre-hearing directions will inevitably result in unnecessary delays or costs in the proceedings, and is likely to result in costs implications. See cost guidelines.