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
The main changes brand owners need to be aware of are listed
Changes to the trade mark opposition and non-use removal
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
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
Expanded jurisdiction of the Federal Magistrates
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
Allowing Customs to release details of the exporter or
consignor to the brand owner
Permitting brand owners to inspect multiple samples of the
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
Should you have any questions in relation to the Amendment Act,
please do not hesitate to contact us.
This publication is intended as a general overview and
discussion of the subjects dealt with. It is not intended to be,
and should not used as, a substitute for taking legal advice in any
specific situation. DLA Piper Australia will accept no
responsibility for any actions taken or not taken on the basis of
DLA Piper Australia is part of DLA Piper, a global law firm,
operating through various separate and distinct legal entities. For
further information, please refer to www.dlapiper.com
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