The Intellectual Property Office of New Zealand (IPONZ) has recently made several adjustments to its trademark litigation procedures. The following are some of the most recent updates:
The new hearing scheduling initiative undergoing a trial period
IPONZ has been trying out a new hearing scheduling scheme in which parties can volunteer to be placed on a waiting list for backup fixtures that become available at short notice. To be placed on the shortlist, a written request must be submitted to IPONZ, and all parties to the proceedings must concur. If you are selected for a shortlist and assigned a fixture date, you will be given a minimum of 20 business days’ notice, as well as expedited deadlines for filing and serving submissions. While parties can still request alternate hearing dates, if the hearing is repeatedly postponed, the scheduled hearing may be removed from the shortlist. If this happens, the case will be scheduled for a hearing within the regular timelines. The trial period began on April 1, 2021, and will conclude on September 30, 2021.
Hearings with electronic bundles
Prior to a hearing, IPONZ requires each party to provide a physical copy of all pleadings and evidence in a single document called the “common bundle.” IPONZ is now transitioning to electronic bundles. IPONZ will tell the parties whether an electronic and/or physical copy of the hearing papers is necessary for the time being since this procedural change is still in the works.
Confidential evidence
IPONZ’s protocols for handling secret evidence have been modified. Before the relevant party’s deadline for lodging their evidence, the parties must agree on what constitutes secret evidence and how it should be processed and revealed. If the parties require additional time to finalize their negotiations, IPONZ will grant a one-month pause in proceedings. If an agreeable solution cannot be reached after this time, one of the following steps may be taken:
- IPONZ will make a proposed decision on how the confidential evidence is to be treated; or
- A case management conference will be scheduled.
If a party believes they may be disadvantaged by IPONZ’s proposed decision, they can also request an interlocutory hearing.
Awarding costs
In trademark cases, it is a common procedure for the Assistant Commissioner to award costs to the losing party. When many procedures are pending but their contents are almost similar, it was customary to award only one fee every step made by the victorious party. This implies that regardless of the number of cases in the proceedings, the costs awarded would be the same. For each successive, essentially identical procedure following the first, the victorious party is now entitled to an extra 20% of the total costs award (excluding disbursements). A cost award can now be made against a losing party who refuses to participate in invalidity procedures. In uncontested revocation or opposition actions, however, expenses are rarely granted.
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