Australia: Important new Australian trade mark law comes into force on 15 April 2013

On 15 April 2013, the provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) that affect the Australian trade mark regime come into force.

Trade mark owners should note that these changes significantly affect the way in which trade mark opposition proceedings will proceed before IP Australia.

Statutory opposition period reduced to two months

Potential opponents of trade marks accepted on or after 15 April 2013 now only have two months from the date that a trade mark application is advertised as accepted in IP Australia's Official Journal of Trade Marks to oppose registration. The opposition period will continue to be three months for trade marks advertised as accepted before 15 April 2013.

Extensions of time to oppose registration difficult to obtain

Potential opponents were previously able to obtain an extension of time to oppose registration fairly easily, in order to make appropriate enquiries to conduct genuine research to determine whether opposition was necessary or for genuine negotiations. This will no longer be the case. It will now be difficult to obtain an extension of time unless a declaration is filed asserting the facts and circumstances as to:

• an error or omission by the person, the person's agent, the Registrar or an employee, or
• other circumstances beyond the control of the person.

Changes to Notice of Opposition

A Notice of Opposition has been separated into two crucial components:

• A 'Notice of Intention to Oppose' (NIO) which must be filed with IP Australia within the two month opposition period.
• A 'Statement of Grounds and Particulars' (SGP) which must be filed with IP Australia within one month of filing the NIO. The SGP needs to set out the grounds of opposition and provide material facts to support those grounds. For oppositions to removal, the SGP will need to set out the grounds for removal and provide material facts supporting the opposition to the removal grounds.

A Notice of Opposition is only taken to have been filed when both the Notice of Intention to Oppose and the Statement of Grounds and Particulars have been filed with IP Australia. If an opponent files an NIO but fails to file an SGP, the Notice of Opposition will be deemed not to have been filed.

Introduction of the Notice of Intention to Defend

If a trade mark owner wishes to defend an application against opposition proceedings, they must file a 'Notice of Intention to Defend' (NID) within one month of being given a copy of the SGP. Failure to file a NID will mean that the opposition will succeed and the relevant trade mark application will lapse.

Introduction of a cooling-off period

It is intended that a cooling-off period will enable parties to attempt to amicably resolve their differences without spending the time and resources required to proceed with opposition proceedings. If both parties to opposition proceedings agree, a cooling-off period of six months can jointly be requested by the parties at any time after a SGP has been filed but before the Registrar has made a decision on the opposition or dismissed the opposition.

The cooling-off period can be discontinued at any time and can be extended for a further six months upon application. When the cooling-off period ends, the opposition resumes and the opposition proceedings commence where they left off.

Stricter timelines for evidence

In an effort to reduce the time taken to resolve opposition proceedings, an opponent will have three months from the date of the filing of the Notice of Opposition to file evidence in support. An applicant will then have three months to file evidence in answer. An opponent will then have only two months to file evidence in reply.

Parties will no longer be able to apply for permission to file further evidence beyond the opportunities afforded above.

Extensions of time to file evidence only available in limited circumstances

Extensions of time to file evidence will only be granted in extremely limited circumstances and the Registrar will have discretion as to the length of the extension having regard to what is reasonable in the circumstances.

IP Australia has indicated that extensions will only be considered if:

• The relevant party has made all reasonable efforts to comply with filing requirements and, despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so.
• There are exceptional circumstances that justify the granting of an extension, including "a circumstance beyond the control of a party; an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement; an order of a court or a direction by the Registrar that the opposition be stayed".

Take away

Given the shorter time to take action against third parties, trade mark owners need to ensure they:

• Have appropriate trade mark watches in place to be alerted to substantially identical or deceptively similar trade marks.
• Work with their trade mark representatives so that evidence is provided quickly to ensure that deadlines are met.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.