Intellectual Property New Zealand (IPONZ) has updated its hearings evidence guidelines for trade marks.

The two main changes are:

• A new section of the guidelines advises counsel not to give their own evidence in proceedings,
• The existing guideline relating to “confidential evidence” now allows initial time for parties to arrange service of confidential evidence without the Commissioner’s intervention. This reflects IPONZ’s current practice.

The updates were reviewed and approved in the August meeting of the Hearings Technical Focus Group.

Counsel representing a party at a hearing should not give their own evidence, for example submitting their own statutory declaration as evidence in the proceeding. If Counsel gives evidence they may:

• be precluded from acting in the proceeding,
• be precluded from appearing at a substantive hearing, and/or
• have their evidence deemed inadmissible.

Non-contentious evidence may still be admitted

While there is certainly some risk in Counsel giving evidence, the Commissioner retains discretion to admit Counsel’s evidence if it is “not of a truly contentious nature so as to justify disqualification”⁷². For example, the Commissioner may decide to admit evidence that is already publicly available such as IPONZ compliance reports.

Agents who give evidence may not represent their client at a substantive hearing

A lawyer or patent attorney who has given evidence for a party in a proceeding may not then appear as that party’s representative at the substantive hearing. This approach was endorsed by Assistant Commissioner Casey in Shenzen Motoma Power Co Ltd v Motorola Trademark Holdings LLC [2016] NZIPOTM 25:

“Rule 13.5 of the code does not go so far as to prohibit lawyers who represent a party from giving evidence. On the contrary, the restriction relates only to evidence of a contentious nature, and even then does not render the evidence inadmissible: rather, the lawyer is expected to cease to act. I note by way of example that in this case Motorola has itself filed evidence from an employee of the firm representing it in this proceeding.”

While there is no absolute prohibition on agents giving their own evidence in proceedings, the implications are such that IPONZ strongly discourages this practice.