Pleadings

What are pleadings?

Pleadings are the documents which outline a party’s grounds of dispute. The party who initiates a proceeding will file pleadings in the form of either:

• a notice of opposition; or
• an application for revocation; or
• an application for invalidity; or
• an application for cancellation or alteration.

The party defending the proceeding will file pleadings in the form of:

• a counterstatement. 

Purpose of the parties’ pleadings

The purpose of the parties’ pleadings is to clearly define the nature and scope of the issues in dispute at the outset of the proceeding.  

The basic requirement of the initiating party’s pleadings is to set out the grounds and material facts on which that party relies, but not the evidence by which those facts are to be proved. The initiating party’s pleadings should be sufficiently clear that the defending party is in no doubt as to the case against them, and is in a position to respond to those grounds. The defending party’s counterstatement should clearly set out its defences to the grounds by responding to all allegations in the initiating party’s pleadings, and the material facts on which it relies in its defence, but not the evidence by which those facts are to be proved.

The importance of clear pleadings 

Clear pleadings are important because they contribute to a fair, efficient, and timely hearing. 

By defining the actual issues in dispute at an early stage in the proceeding the parties can focus their efforts on these matters when preparing and filing their evidence, as opposed to wasting time and effort filing evidence for matters that are not in dispute.

The importance of clear pleadings was noted by the High Court in Rainbow Technologies Inc v Logical Networks Ltd [2003] 3 NZLR 533 (HC) in which Hammond J cited with approval the decision in Distributors Limited v Matsushita Electric Industrial Co Ltd [1999] 9 TCLR 349, to the effect that “…proper attention needs to be paid to Notices of Opposition and Counter Statements because these form the “pleadings” in a trade mark case.” His Honour then noted that “a party is responsible for the advancement of his or her own case, and for the making it plain what is being put in issue.” 

Consequence of unclear or incomplete pleadings

If the parties file unclear or incomplete pleadings there is a risk they will not be permitted to rely on a ground that is deemed not to have been pleaded sufficiently clearly, or not pleaded at all. 

Different role of pleadings and evidence

It is important to understand the different role of pleadings and evidence.

As discussed above, the role of pleadings is to define the nature and scope of the issues in dispute at the outset of the proceeding. The purpose of the parties’ evidence is to prove or disprove various factual matters in respect of the disputed issues in the pleadings.

The parties should not file evidence with their pleadings. They will be given the opportunity to file their evidence during the evidential stages of the proceedings.

See evidence requirements for more information.

Mandatory requirements for pleadings

Pleadings must contain all of the mandatory information stipulated under the Trade Marks Act and Regulations for each proceeding type.

These requirements are discussed in the guidelines for each proceeding type.

Here are links to those guidelines:

• Opposition
• Application for revocation
• Application for invalidity
• Application for cancellation or alteration

Amendment of pleadings

Section 194, Regulations 11 and 11A

While all grounds should be clearly pleaded at the outset of the proceeding, it is possible for parties to request to amend their pleadings under section 194 any time prior to the hearing to which the pleading relates.

See amending pleadings and other hearings documents for more information.

Footnotes