Confidential Evidence - Guidelines Update

The Intellectual Property Office of New Zealand (IPONZ) has updated its practice guidelines relating to confidential evidence filed in trade mark proceedings.

While it is possible to request information be kept confidential when filing evidence at IPONZ (by means of a separate declaration marked as “confidential”), it is required per the Trade Mark Regulations 2003 that all evidence in proceedings be served on the opposite party if it is to be relied upon.

IPONZ has previously allowed an agreement to be reached between the parties as to how confidential evidence will be handled after the evidence deadline date, allowing up to two months for parties to resolve the matter. However, IPONZ now requires that the treatment of confidential evidence be resolved between the parties before the deadline for filing the evidence. Should an agreement not be reached by the deadline, the proceedings will then be halted for one month to allow for continuing discussions.

In the event the matter is not resolved by the end of the one month period, IPONZ will either make a decision as to how the confidential information should be handled, or schedule a case management conference. Please note that should IPONZ have to step in there could be cost implications involved.

Confidentiality issues are commonplace in IPONZ proceedings, and the Office encourages parties to use their “best endeavours” to come to an agreement as to how confidential evidence is to be treated, without requiring intervention by the Office.

Should you have any questions in relation to the filing of confidential evidence, please do not hesitate to contact us.


Article written by Ingrid Seegers, August 2021