In this practice guideline
Shortlist for hearings that can be held at short notice
If you would like your Trade Mark or Patent proceeding to be heard by an Assistant Commissioner as soon as possible, you can request that the proceeding be placed on the shortlist for hearings to be heard at short notice.
Shortlisted cases may be used as back-up fixtures in circumstances where the original fixture has fallen over, or a timeslot becomes available for other reasons (such as Assistant Commissioner availability). Being on the shortlist does not guarantee your proceeding will get an expedited fixture date.
If placed on the shortlist, your proceeding will remain on the general list of fixtures waiting to be allocated a hearing date so that it does not lose its place in the queue.
How to get on the shortlist
The Office will write to both parties at the pre-hearing direction stage of the proceeding, inviting them to confirm whether they wish to be placed on the shortlist.
You will need to submit written confirmation that you and the other party agree that the proceeding can be heard at short notice. This agreement should be signed by both parties and filed via the online case management system.
If the other party has elected to be heard on the papers, you do not need to provide their agreement that the proceeding be placed on the shortlist.
If one party elects to be placed on the shortlist, and the other party does not consent, the proceeding will not be placed on the shortlist.
IPONZ reserves the right to deny requests to place a proceeding on the shortlist. This is regardless of any agreement between parties, and will usually be based on complexity reasons or the time required for the matter to be heard. All requests will be assessed on case-by-case basis.
What happens once the proceeding is placed on the shortlist
IPONZ will notify you in writing via the online case management system if your proceeding has been placed on the shortlist. In this notification we will prescribe the deadlines in order for you to get your case prepared for a hearing.
From the date of this notification, the initiating party will have 1 month to file and serve its submissions. The responding party will then have 2 weeks thereafter to file its own submissions.
The IPONZ Hearings Office will schedule the remaining deadlines in accordance with the standard Trade Mark Pre-Hearing Directions and Patent Pre-Hearing Directions.
If the proposed date for the hearing cannot accommodate the standard pre-hearing direction deadlines, we will correspond with both parties in order to reach an agreement regarding acceptable turnaround times.
Once a proceeding has been placed on the shortlist, the IPONZ Hearings Office will be reluctant to allow a party to change how it wishes to be heard without a reasonable explanation being provided.
If placed on the shortlist and you are unable to attend a hearing at short notice, the Office will offer that spot to parties involved in the next proceeding on the shortlist.