Australia: Changes to Australian trade mark practice - Raising the bar

Last Updated: 4 May 2013
Article by Georgina Hey


The Intellectual Property Amendment (Raising the Bar) Act 2012 (the Act) and the Intellectual Property Amendment (Raising the Bar) Regulations 2013 (the Regulations) came into effect in Australia on 15 April 2013.

These changes have created some significant and often welcome changes to Australian trade mark practice, particularly before the Trade Marks Office of IP Australia with respect to trade mark oppositions.

A brief outline of the key changes is included below, and a table setting out the new opposition procedures and time frames is included.

Trade mark oppositions

  1. Notice of intention to oppose and statement of grounds and particulars

The notice of opposition now consists of two documents: the notice of intention to oppose and the statement of grounds and particulars. This brings Australian practice in line with much of the rest of the world, including the UK and Europe.

The notice of intention to oppose must be filed within 2 months from the day the acceptance of the trade mark application is advertised, where previously a 3 month opposition period applied.

The statement of grounds and particulars must be filed within 1 month from the day the notice of intention to oppose is filed. The statement of grounds and particulars sets out the grounds on which the opponent intends to rely and the facts and circumstances forming the basis for the grounds. The Registrar will assess the adequacy of the statement of grounds and particulars, and if it is not adequate, the opponent may be directed to file more information. If the statement is still inadequate, the Registrar may delete some or all of the inadequate material from the statement or dismiss the opposition in its entirety.

Once the statement of grounds is filed, there is only limited opportunity to amend, including to add further grounds for opposition at a later date (see further comments below).

The statement is therefore an important document, and one that must be given special attention at the beginning of any new opposition proceedings. Previously, in Australia, an opponent could file a notice of opposition covering all grounds, and only limit the notice to the relevant grounds once all evidence had been compiled, submitted and reviewed. This is no longer possible.

These changes apply to opposition proceedings commenced by the filing of a notice of intention to oppose on or after 15 April 2013. However, if an application was advertised before 15 April 2013 and a notice of intention to oppose is filed on or after 15 April 2013 the notice of intention to oppose can be filed within 3 months of the advertisement.

  1. Amendment of notice of intention to oppose or statement of grounds and particulars

A notice of intention to oppose may be amended at any time to record that the identity of the opponent has changed, or:

  1. to correct a clerical error; or
  2. to correct an obvious mistake.

A statement of grounds and particulars for opposition to registration or protection may be amended to:

  • correct an error or omission in the grounds or particulars;
  • amend a ground of opposition;
  • add a new ground of opposition; or
  • amend the facts and circumstances forming the grounds.

The Registrar will only grant requests to amend or add a new ground of opposition if they relate to information that the opponent could not have been reasonably aware of at the time of filing. Therefore, failure to consider all grounds at the outset of an opposition could be lethal to the ability to succeed in an opposition.

  1. Extension of time to file a notice of intention to oppose or statement of grounds and particulars

An extension of time to file a notice of intention to oppose or a statement of grounds and particulars may be requested within the period for filing the document in question. The grounds available for an extension are limited to:

  1. an error or omission by the person, the person's agent, the Registrar or an employee; or
  2. circumstances beyond the control of the person.

Unlike the current procedures where extensions can be sought of the basis of genuine negotiations between the parties, or undertaking research to determine whether an opposition is warranted, no other grounds for an extension exist.

  1. Notice of intention to defend and lapsing of trade mark

If a notice of opposition is filed, the applicant must file a notice of intention to defend the application within 1 month from the day the applicant is given a copy of the statement of grounds and particulars. This is a new requirement.

If the notice of intention to defend is not filed, or the date for filing the notice extended, the trade mark application will lapse. This is good news for potential opponents where previously an opposition had to run its full course with or without any interaction by the trade mark applicant.

The period for filing a notice of intention to defend can only be extended in limited circumstances and in accordance with section 224 of the Trade Marks Act 1995.

  1. Cooling-off period

A cooling-off period can be requested after a statement of grounds and particulars has been filed but before the Registrar has made a decision on the opposition or dismissed the opposition. If both parties agree to the cooling-off period, the Registrar must allow a cooling-off period of 6 months. The Registrar must also extend the cooling-off period for 6 months if the parties so agree. No further extensions are available, and no further cooling-off periods will be allowed.

Either party has the unilateral right to request the cooling-off period to be discontinued.

When the cooling-off period ends, either by discontinuation or expiry, the opposition resumes and the relevant stage of the proceedings restarts (that is, if the opposition is in the evidence in support stage, the evidence in support is due 3 months from the day the cooling-off period ended).

  1. Evidence

The same initial evidence periods apply in an opposition. These are set out in the attached table. That is:

  1. An opponent must file any evidence in support of the opposition within 3 months from the day the opponent was given a copy of the notice to defend.
  2. The applicant must then file any evidence in answer to the evidence of support within 3 months from the day the Registrar gives the applicant all evidence in support (or the final instalment of such evidence) and notifies the applicant that all evidence in support has been filed. If no evidence in support is filed, the applicant must file evidence in answer to the statement of grounds and particulars within 3 months of the day the Registrar notifies the applicant that no evidence in support was filed.
  3. The opponent then has 2 months to file evidence in reply from the day the Registrar gives the opponent all evidence in support (or the final instalment of such evidence) and notifies the opponent that all evidence in support has been filed.

The option to apply for permission to file further evidence is not available in opposition proceedings commenced on or after 15 April 2013.

  1. Extensions of time for filing evidence

The conditions for granting an extension of time to file evidence have become more stringent. A period to file evidence may only be extended if:

  1. the party has made all reasonable efforts to comply with all relevant 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; or
  2. there are exceptional circumstances. Exceptional circumstances include 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, and an order of a court or a direction by the Registrar that the opposition be stayed.

The Registrar will take into account what is reasonable in the circumstances when granting an extension and may do so on terms that the Registrar considers appropriate.

There is some disagreement as to the application of the new requirements for extension. The better approach is to assume the more stringent requirements apply to all extensions of time sought after 15 April 2013, including those sought for oppositions which have been ongoing for some time before the new regime came into play.

It is expected that extensions of time for filing evidence will be much more difficult to obtain and general statements, such as 'the Opponent is in the process of gathering evidence' will not be sufficient for an extension to be granted.

Further changes

  1. Oppositions to removal of a trade mark from the register for non-use

The above opposition changes also apply to the processes for opposing the removal of a trade mark where removal has been sought on the basis of non-use.

  1. Customs notices

The new customs notice procedures now place the onus on an importer of any goods seized under a customs watch notice to make a claim for release of those goods.
Previously, brand owners were required to commence proceedings in a Court within tight timeframes to prevent seized goods from being released to the importer. This is good news for brand owners.

  1. Presumption of registrability

The new regime confirms that the presumption of registrability applicable to Australian trade mark applications does extend to questions of distinctiveness raised under section 41 of the Trade Marks Act 1995.

  1. Penalties for infringement

The new regime increases the penalties available in enforcement proceedings to be in line with those available under the copyright provisions.

  1. Professional privilege

The changes also now clarify that trade mark attorneys and their clients will enjoy the same professional legal privilege applicable to legal practitioners. This applies to both local and overseas registered attorneys.

  1. Appeals from decisions of the Trade Marks Registrar now available to the Federal Circuit Court (previously the Federal Magistrates Court)

This should allow for a more timely and cost effective appeal process from any decisions of the Registrar than was previously available through the Federal Court of Australia.

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.

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Georgina Hey
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