25 May 2020 update
IPONZ has recently updated the range of cases and tasks whose due dates may be extended in acknowledgement of the disruption caused by COVID-19.
IPONZ will no longer automatically extend deadlines for trade mark owners to file their counterstatement and evidence in revocation proceedings for non-use of a trade mark. Extensions of time can be requested if the owner is impacted by COVID-19.
For any other proceedings task that requires the submission of evidence, the automatic extension process remains. In addition, the Hearings Office will also now be notifying all parties on proceeding of the extension.
For further information, please refer to our article, IPONZ services during COVID-19.
13 May 2020 update
IPONZ recognises that the New Zealand and overseas responses to the COVID-19 pandemic can present difficulties for the gathering of evidence and the execution of statutory declarations and affidavits.
The Hearings Office practice in this time is evolving with the changing circumstances. In general terms IPONZ intends to limit unfairness or prejudice to a party caused by the pandemic, while seeking to progress proceedings and hearings.
The following outlines the current approach of the Hearings Office to evidence and deadlines. Please note that each proceeding or application will be addressed on its own merits.
Automatic extension of evidence deadlines
Currently all proceeding tasks which require the submission of evidence are being extended automatically. Please refer to our earlier article, IPONZ services during COVID-19, for more information.
This automatic extension will occur within 2 weeks of the deadline, with a notification sent only to the party who is required to file the evidence. This is sent via a 'discussion' on the proceeding case in the IPONZ case management facility.
Commissioner's direction as to the mode of giving evidence
The requirement for evidence to be presented in the form a statutory declaration or affidavit for the determination of a proceeding remains a requirement for proceedings.
New Zealand oaths and statutory declarations can be administered or taken using an audio-visual or audio link during the course of the pandemic, as per the Epidemic Preparedness (Oaths and Declarations Act 1957) Immediate Modification Order 2020. The laws in other countries regarding execution of affidavits and statutory declarations may be different.
Section 160 of the Trade Marks Act 2002 provides that 'evidence must be given by affidavit or statutory declaration in the absence of directions to the contrary'. This allows the Commissioner to give directions on how evidence is given.
Until further notice the Hearings Office will accept unsworn evidence to in order to meet an evidence deadline in a proceeding. This direction remains in place until further notice. Should IPONZ update this direction, the change in approach will be notified by way of notice on the IPONZ website. This may be before or after the expiry of the Epidemic Preparedness (COVID-19) Notice 2020.
Filing unexecuted evidence
If a party wishes to keep deadlines running in a proceeding, evidence can be filed in an unsworn form in order to meet an evidence deadline. The proceeding will then progress to the next stage. The proceeding will not be halted unless the party seeks a halt or extension to file the properly executed declaration.
The proviso is that a properly executed statutory declaration or affidavit must be filed as soon as it is reasonably possible and before the proceeding is ready to be decided. In the current circumstances it will generally be considered fair and reasonable to allow the draft declaration to be amended with the executed version.
Please note that in these cases, the Commissioner may set deadlines as needed for the filing of the executed evidence, provided that these deadlines are fair and reasonable.
Where evidence in an unsworn form is filed to meet a deadline it must be accompanied by:
- a statement explaining the circumstances of why it is not possible to have the evidence executed
- confirmation that the declaration or affidavit is in final form
- confirmation the evidence completes that step of the procedure
- a request to file the same evidence in an executed statutory declaration or affidavit under Regulation 11 of the Trade Marks Regulations 2003.
If the executed evidence contains corrections, alterations or additional evidence, those changes must be identified. At this stage of a proceeding, the addition of material to the evidence or non-trivial amendments is unlikely to be considered a fair and reasonable amendment under Section 194. Any change more than a correction of a clerical error or an obvious mistake, must be by way of an application for permission to file evidence out of time under Regulation 34 of the Trade Marks Regulations 2003, and will be assessed under that regulation.
Hearings by attendance (video-conference)
In 2019, the Hearings Office issued new guidelines to encourage the greater use of video-conferencing at hearings.
Hearings via video-conference are available during the pandemic and hearings by attendance continue to be scheduled. Video-conference hearings are appropriate for the majority of proceeding cases. Our expectation is for the near future most hearings by attendance will be heard via video-conference.
Common bundle and bundle of authorities
The Hearings Office has a list of standard pre-hearing directions for hearings attended by at least one party.
Please note that the requirement for a hard copy bundle of authorities and documents is currently suspended. We request that parties do not file hard copies of these documents. Electronic versions must still be filed via the IPONZ case management system.