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The Intellectual Property Office of New Zealand (IPONZ) handles trade mark registration matters in the country. If you wish to initiate proceedings against a trade mark owner, or someone does so against you, their Hearings Office manages such processes. Depending on the nature of the proceedings, they can result in a trade mark hearing. Here, both parties may present their cases to the Assistant Commissioner, who will issue a decision. This article will outline five tips for preparing for a trade mark hearing

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1. Seek Legal Advice

Trade mark hearings are formal proceedings that can involve complex legal matters. . Therefore, you should seek tailored legal advice from an experienced trade mark lawyer to help you navigate this process. This fact is especially true if you are not familiar with trade mark or intellectual property (IP) law, or if the issue at hand is particularly intensive. If you choose not to seek legal advice, you may unintentionally take on unnecessary risks, and you may not adequately protect your interests. 

[content box] If you are an international business dealing with a hearing regarding your New Zealand trade mark rights, you should appoint local counsel to handle any proceedings. They are familiar with the local law and can act as your local address of service.

2. Focus Your Arguments

Taking part in a trade mark hearing involves organising arguments to support your case. If you are initiating legal proceedings against a trade mark owner, you will need to rely on various legal grounds to support your arguments. Grounds are legal reasons that you may rely on, which may be successful or unsuccessful.

For instance, say that you are opposing the registration of a trade mark application. One ground you may rely on is that it is confusingly similar to your own trade mark, conflicting with your rights.

Depending on the nature of your proceedings, the grounds that you advance can vary. In some cases, you may be able to put forth multiple grounds. However, you should not take the ‘kitchen sink’ approach, where you attempt to advance your case on more than four or five grounds. Only rely on the arguments that are relevant and have the most chance of success. Otherwise, you run the risk of using redundant arguments. This can ultimately undermine your case.

3. Only Prepare Relevant Evidence

Both before and during a  trade mark hearing, you will need to provide evidence to support your case. These documents should back up your arguments, citing specific instances in time or referring to crucial documents. 

Ideally, trade mark hearings should be fair, efficient, and inexpensive. 

However, sometimes parties submit large amounts of irrelevant or unnecessary evidence. Taking time to go through these documents is inefficient and costly for both parties, and can induce an unnecessary load on the resources of the IPONZ Hearing Office. If you submit evidence of this nature, this can negatively impact your case.

Therefore, you need to consider the relevancy of the evidence you are submitting and cut it down where possible. For example, if your evidence comes from a magazine or company brochure where only one or a few pages are relevant, submit only those pages and the front and back covers.

Additionally, there are some kinds of evidence that you cannot submit in IPONZ trade mark proceedings, such as:

  • hearsay evidence;
  • non-expert opinion evidence;
  • submissions;
  • evidence of without prejudice communications; and
  • irrelevant evidence.

A lawyer can help you determine what these mean for your preparations.

4. Prepare Evidence in Its Correct Form

Furthermore, you should ensure that you only provide evidence in the correct format. There are specific rules for submitting evidence, which you must follow if you wish for the Assistant Commissioner to consider what you do provide. 

In particular, in lieu of any specific directions to the contrary, you must give evidence by affidavit or statutory declaration. 

The table below sets out a brief explanation of these two statements:

AffidavitsA written statement, sworn on oath or affirmed to be true. The deponent (the person making the affidavit) must swear while holding their hand on a religious book or make an affirmation.
Statutory declarationsA written statement, solemnly and sincerely declared true by the writer (the declarant). Only a person authorised by the Oaths and Declarations Act can take a statutory declaration, such as a barrister or Justice of the Peace.

You can then attach documents as exhibits to these written statements.

5. Try to Solve Issues Amicably Before Going Forward

Ultimately, before initiating any kind of proceedings, you should reach out to the trade mark owner directly to try to solve any problems either informally, or through alternative dispute resolution (ADR). This way you can both avoid hearing and application costs and save valuable time. Additionally, a failure to do this may affect any awarding of costs if you are the successful party.

Key Takeaways

Trade mark hearings can be a complex and intensive legal process. Therefore, you should prepare accordingly and seek legal advice where possible. You must also carefully draft evidence, ensure it complies with all appropriate guidelines, and attempt to resolve the dispute amicably before proceeding to court. 

If you need help with preparing for a trade mark hearing, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

How much does a trade mark hearing cost?

Your trade mark hearing’s cost depends on the nature of your hearing. If you decide to rely only on what you have already submitted, there is no extra cost. However, if you decide to write new submissions or appear before the Assistant Commissioner in person, you incur a hearing fee of $850 excluding GST.

How can I submit evidence for trade mark proceedings?

You must submit evidence as either an affidavit or statutory declaration. You can submit other documents, like brochures or email exchanges, as exhibits attached to these.

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