Updates to guidelines on Trade Mark and Patents Hearings

Updates to guidelines on Trade Mark and Patents Hearings

We have recently updated a number of our guidelines on Trade Mark and Patents Hearings.

Appeals and Stays of Proceeding

Whenever a Trade Mark or Patents hearing decision is appealed to the High Court, we will no longer automatically stay (pause) the corresponding proceeding on IPONZ’s side.

In order to pause a proceeding, parties should also make an application to the court for a stay of proceedings at the same time as filing their notice of appeal.

  • If an order for a stay of proceedings is made, the decision of the Assistant Commissioner will not be implemented unless it is upheld on appeal.
  • If the Commissioner is not notified of an application or order for stay of proceedings, the decision will be upheld and the Register altered accordingly once the appeal period has ended. This may result in adverse consequences for the appealing parties.

Our updated guidelines may be found below.

Trade Mark hearing decisions

Patents hearing decisions

Attendance at Trade Mark hearings

We have updated our guidelines on trade mark hearings to include or clarify the following:

  • Junior counsel are welcome to attend and participate in hearings, provided they are also listed as attendees in the pre-hearing arrangements.
  • Hearings by attendance may be held in either Wellington or Christchurch. We have also included the physical locations in these cities which may act as venues for these in-person hearings.
  • We have outlined new guidelines on the attendance of parties to the proceeding, members of the public, and media representatives to hearings.

For more details, please see our updated guidelines below.

How you can be heard

Published on February 27, 2024