IP Australia has recently released a consultation paper entitled
"Resolving Trade Mark Opposition Proceedings Faster".
This paper sets out a number of proposals which are directed at
improving the Australian intellectual property system and is aimed
particularly at resolving trade mark oppositions in a more
Extensions of time to oppose/filing a notice of opposition
IP Australia proposes to remove the following grounds for
extending the period of filing a notice of opposition:
conduct of genuine negotiations; and
undertaking of research to decide whether to oppose the grounds
If these grounds are removed, it will only be possible to extend
the period for filing a notice of opposition in the case of an
error or omission by IP Australia, the opponent, or its agent, or
if there are circumstances beyond the control of the party
IP Australia has also proposed that at the time of filing a
notice of opposition, the opponent must specify the following to
ensure that the opponent's case is sufficiently defined early
in the opposition proceedings:
the grounds on which the application is being opposed (as is
currently required); and
the particulars of those grounds - that is, the material facts
on which each ground of opposition is based.
It is also proposed that the Registrar is given the power to
dismiss an opposition if the statement of goods and particulars is
not provided. If the applicant wishes to proceed with its
applications once it has been opposed, it would be required to
provide a "notice of intention to defend" within one
month of the filing of the notice of opposition.
Time limits for extensions of time for providing evidence
IP Australia has noted that the numerous extensions of time
requested for providing evidence delay opposition proceedings. In
light of this, IP Australia is proposing that the Registrar would
direct that any extension of time only be granted if the Registrar
is satisfied that:
although the party has acted diligently, it is unable to serve
the evidence in that period; or
some other compelling circumstance requires such a
An example of a compelling circumstance provided in the
consultation paper is where there are pending proceedings before a
court which may be relevant to the current opposition
IP Australia proposes that a cooling-off period be introduced to
allow parties to enter into settlement negotiations. This may be
requested at any time once the notice of opposition has been filed.
The suspension may be requested for a minimum of 6 months initially
and extended for a further 6 month period after that for a total of
Summoning of witnesses/production of documents
In order to reduce delays further, IP Australia proposes that
the Registrar be able to exercise the power to summon witnesses
and/or the production of articles only if they are relevant to the
present opposition proceedings and if the Registrar is satisfied
that this would substantially contribute to the correct decision
Summary of submissions
IP Australia proposes that a summary of submissions be submitted
prior to attending hearing. It is proposed that the opponent be
required to file and serve submissions on the applicant at least 5
business days before the hearing and the applicant be required to
file and serve submissions on the opponent at least 2 business days
before the hearing.
IP Australia welcomes any written submissions from interested
parties in response to the proposals put forward as well as any
suggestions. IP Australia will consider submissions received and
will provide recommendations to the government accordingly. Please
note that the closing date for submissions is 17 August
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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