Updates to hearings guidelines

Updates to hearings guidelines

IPONZ has recently updated a number of guidelines relating to trade mark and patent proceedings.

Following recent reviews and technical focus group discussions, our Hearings Office has updated a number of guidelines and practices.

Implementation of use of electronic bundles at hearings

We have begun to transition towards the use of electronic bundles in hearings. This will gradually replace the current practice of requiring all parties to file hard copies of the bundle in advance of their hearing.

Our trade mark pre-hearing directions have been updated to reflect this move, and provide more guidance in relation to our Hearings Office’s requirements for electronic bundles.

New guidelines on amendments made during the course of a patent proceeding

We have developed new guidelines relating to amendments that are requested during the course of a patent proceeding. These guidelines relate to the following:

  1. Requests to amend a complete specification during a proceeding;
  2. Requests to amend pleadings; and
  3. Requests to amend other hearing documents.

Update to guidelines on confidential evidence for trade mark proceedings

We have updated our practice guidelines relating to confidential evidence filed in trade mark proceedings. This is to reflect changes in practice following technical focus group feedback.

The updated guidelines note that the treatment of confidential evidence in a proceeding should be resolved by its parties prior to a party's deadline for filing evidence. If an agreement is not reached prior to the deadline, our Hearings Office will halt the proceeding for one month to allow for these discussions. This is a reduction in time from the previous allowance of two months.

If the parties do not reach an agreement at the end of this one-month period, our Office may either make a proposed decision on how the confidential evidence is to be treated, or alternatively schedule a case management conference in order for a determination to be made.

Should a party consider themselves to be adversely affected by a proposed decision of the Office in relation to the confidential evidence, they may request an interlocutory hearing under reg 123(1) of the Trade Mark Regulations 2003.

New and updated guidelines on costs awards for trade mark proceedings

We have created a new guideline in relation to how costs will be treated in multiple trade mark proceedings where the pleadings, evidence and submissions are substantially identical.

Previously, where multiple trade mark proceedings had been filed which were substantially identical, the approach taken was to award only one fee per step taken by a successful party.

Under the new guidelines, a further 20% of the total costs (excluding disbursement) will be added to the award in recognition of the administrative burden of filing documents on multiple proceedings.

In addition, we have updated our practice guidelines to reflect existing practices on costs awards in uncontested invalidity proceedings for trade marks.

We consider that costs awards in accordance with the standard IPONZ scale may be made against an unsuccessful party who does not take any steps in an invalidity proceeding. In contrast, cost awards will not generally be awarded in uncontested revocation or opposition proceedings.

Update to guidelines for hearings held at short notice

A minor update has been made to IPONZ’s guidance document on the trial initiative for hearings to be held at short notice. This update clarifies IPONZ’s expected practice in situations where parties are not able to attend a short notice fixture.

Published on August 3, 2021