The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Amendment Act) will take effect on 15 April 2013. Trade mark applications whose acceptance is advertised in the Official Journal of Trade Marks on or after 15 April 2013 will be subject to the new opposition practice rules.

Now is the time for brand owners to ensure they understand the impact of the new law. In short, the amendments will benefit brand owners by streamlining and improving the process of trade marks oppositions, enabling trade mark disputes to be resolved more quickly.

The main changes brand owners need to be aware of are listed below.

Changes to the trade mark opposition and non-use removal processes
Major changes to the opposition and removal processes include:

  • The opposition period has been shortened from three to two months following advertisement in the Official Journal of Trade Marks.
  • The new Notice of Opposition will contain two documents: the Notice of Intention to Oppose - to be filed two months from the date of advertisement in the Official Journal of Trade Marks; and the Statement of Grounds and Particulars - to be filed one month from the date of filing the Notice of Intention to Oppose. The Statement of Ground and Particulars must state the material facts on which each ground of opposition is based, but will not require evidence to prove the facts.
  • There will be very limited opportunity to amend either document comprising the Notice of Opposition.
  • An extension of time to file a Notice of Intention will no longer be granted on the basis of 'genuine research' or 'settlement negotiations', rather an extension will only be available where there was an error or omission by IP Australia, the person seeking extension or an attorney/agent; or in circumstances beyond the control of the person.
  • The introduction of a Notice of Intention to Defend, to be filed by the applicant one month from the day the applicant is given a copy of the Statement of Grounds and Particulars. If an applicant does not file a Notice of Intention to Defend, the application will lapse.
  • Introduction of a cooling off period for the purpose of conducting settlement negotiations. Parties may apply for a cooling off period by consent any time after the complete Notice of Opposition has been filed. The initial cooling off period will be six months and can be extended to 12 months.
  • Extensions of time for filing evidence will be much more difficult to obtain and will only be available in exceptional circumstances or if the Registrar is satisfied that the party has made all reasonable efforts to comply with the deadline, but despite acting promptly and diligently was unable to file its evidence in time. This change is applicable to pending oppositions which have current evidence deadlines after 15 April 2013.
  • Documents will be electronically filed and the Registrar will be responsible for sending documentation to the other party. There is no longer a requirement to serve any documents or evidence on the other party.

Additional damages for infringement
The Amendment Act includes provisions for additional damages in infringement proceedings. In addition to harsher criminal sanctions for trade mark infringement, the court will be given power to award additional/punitive damages for trade mark infringement in civil proceedings.

Expanded jurisdiction of the Federal Magistrates Court
The Amendment Act gives the Federal Magistrates Court jurisdiction to hear matters arising under the Trade Marks Act 1995 (Cth), including appeals from oppositions.

Customs seizures process amended
The amendments will slightly alter the process of customs seizure in Australia and are favourable to brand owners. The amendments aim to simplify the process of customs seizures by:

  • Shifting the onus onto the importer to make a claim to Customs to release seized goods, failing which the goods will be forfeited and destroyed
  • Allowing Customs to release details of the exporter or consignor to the brand owner
  • Permitting brand owners to inspect multiple samples of the seized goods.

With the launch of the Raising the Bar amendments only a few weeks away, brand owners should consider how the new laws will affect them. We are actively advising clients in this area, and would be happy to assist you with understanding and utilising the new amendments.

Should you have any questions in relation to the Amendment Act, please do not hesitate to contact us.

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