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Raising the Bar Act – Significant Changes to Trade Marks Oppositions in Australia

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By Louise Wolf, Senior Associate, Mason Sier Turnbull

On 15 April 2013, some very important changes to the way trade mark oppositions operate in Australia came into effect.  These changes affect all trade mark oppositions that are lodged after this date and also many oppositions that have already been lodged. 

The main differences between the old and the new systems are:

  1. 2 month opposition phase instead of 3 months after the advertisement of acceptance of a trade mark;
  2. Opponents are no longer required to serve opposition documents on the Applicant.  Oppositions need only be filed with IP Australia, and IP Australia will notify Applicant.  Filing can be done electronically;
  3. Filing an opposition comprises two main initial requirements for the Opponent:

    a) Filing a Notice of Intention to Oppose within the 2 month opposition phase; and
    b) Filing a Statement of Grounds and Particulars within 1 month after the Notice of Intention to Oppose;

    If IP Australia determines that the particulars are inadequate, they may ask for further information.  If the particulars are still found to be inadequate, IP Australia may dismiss the opposition or delete grounds that have not been adequately particularised.

    In order to adequately particularise the grounds, it may be necessary for much of the research and evidence to be gathered at an earlier stage than under the old system (although the evidence need not be filed at this stage).

  4. Applicant must then file a Notice of Intention to Defend within 1 month of receiving the Statement of Grounds and Particulars.  If the Applicant fails to do this, their trade mark application will lapse.  This is a very serious consequence for trade mark applicants.
  5. The evidence stages essentially remain unchanged:

    a) 3 months for the Opponent to file its Evidence in Support of its Opposition; then
    b) 3 months for the Applicant to file its Evidence in Answer; then
    c) 2 months for the Opponent to file its Evidence in Reply (reduced from 3 months).

    The main difference is that under the old system, extensions of between 9-12 months could be obtained at each stage of evidence.  However, under the new system, there will no longer be extensions granted for the filing of evidence except where:

    (i)  all reasonable efforts have been made to comply with filing requirements; and
    (ii) despite acting promptly at all times, there is an inability to file evidence;
    (iii) there are exceptional circumstances which are beyond the control of that party or error or omission by IP Australia.

    This is a very big change and will necessitate prompt and diligent action by all parties at each stage to ensure that deadlines are met.

  6. There is no longer the possibility for filing of ‘further evidence’ after the filing of Evidence in Support by the Opponent.
  7. The new rules can also affect parties who lodged oppositions or had an opposition filed against their trade mark before 15 April 2013, especially throughout the evidence stages.  For example, any extensions of time sought after 15 April 2013 will need to satisfy the new grounds for the extension to be granted, even though the opposition may have been lodged before that date. 
  8. An opponent can still suspend the opposition as under the old system, for up to two periods of 6 months, but this can only occur after the notice of Grounds and Particulars has been served.

Key recommendations

As a result of these changes to trade mark oppositions, we recommend:

  1. A watching service that should occur at least once a month to ensure maximum time to prepare and file the Notice of Intention to Oppose and the Statement of Grounds and Particulars;
  2. Planning a strategy for the Opposition from the outset; and
  3. Working hard on gathering the relevant evidence and preparing statements early.

If have any questions about trade mark oppositions or require any advice about any other intellectual property matter, please contact Louise Wolf of Mason Sier Turnbull’s Intellectual Property team on (03) 8540 0200.