The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Act) comes into force on 15 April 2013. This will (among other changes):
- implement significant changes to the practice applicable to both trade mark opposition and removals;
- introduce new procedures relating to customs notices,
- provide for higher penalties; and
- allow the incorporation of trade marks attorneys.
The Federal Magistrates Court will also be granted jurisdiction over trade marks matters in respect of appeals from Registrar’s decisions and infringement actions.
The presumption of registrability will now apply to the rewritten s41 of the Trade Marks Act 1995 with respect to the inherent registrability of a trade mark.
Finally, trade marks attorneys and their clients will enjoy the same professional legal privilege as legal practitioners and their clients. This extends legal privilege to any communications or correspondence that may attract privilege regardless of whether the trade mark attorney is domestic or abroad.
In practical terms, the changes to the trade mark opposition and non-use action provisions will impact trade mark owners and their lawyers significantly. Careful note should be made of these changes which are summarised below.
Trade Mark Oppositions
The changes effected by the Act are applicable to both oppositions to registrations and removal applications filed on the basis of non-use.
Opposing a Trade Mark
Previously, the acceptance of a trade mark application for registration was advertised for opposition purposes for a period of three months. That period could be extended by up to a further three months as a matter of routine to enable a prospective opponent time to determine the grounds of opposition or whether an opposition was justified.
An extension of time was also available to enable the opponent to engage in negotiations with the trade mark applicant. A Notice of Opposition was also generally filed claiming all possible grounds of opposition available pursuant to the Trade Marks Act 1995.
From 15 April 2013, there will be two new mandatory elements of the procedure relating to trade mark oppositions:
- A “Notice of Intention to Oppose” must be filed with IP Australia (IPA) within 2 months of advertisement of acceptance in the Australian Official Journal of Trade Marks; and
- A “Statement of Grounds and Particulars” (SGP) setting out the grounds of opposition and the material facts which particularise each of those grounds must be filed with IPA within 1 month of filing a Notice of Intention to Oppose.
The SGP is a new procedural step implemented by the Act. The grounds claimed must be “adequate”. An application is treated as opposed only when both the Notice of Intention to oppose and the SGP are filed.
Amendments to the SGP will be allowed only under tightly controlled circumstances. For example, new opposition grounds will only be permitted if the opponent could not reasonably have been aware of those grounds at the time of filing the SGP.
The Registrar also has the power to dismiss opposition proceeding where an opponent does not comply with their obligation to file a SGP or fails to adequately particularise the grounds of opposition in the SGP.
Extensions of time for filing a “Notice of Intention to Oppose” and/or the SGP will only be permitted where there is:
an error; or
an omission by the opponent, the opponent’s agent or the Registrar; or
“circumstances beyond the control” of the opponent, the opponent’s agent or the Registrar.
Defending an Opposed Trade Mark Application
In order for an application to be maintained and the opposition to be defended, an applicant must now defend their trade mark application through filing a “Notice of Intention to Defend”. This can only be filed after both the “Notice of Intention to Oppose” and the SGP are filed by the opponent and accepted by the Registrar.
The “Notice of Intention to Defend” must be filed by the applicant with IPA within 1 month from the day the Applicant is given a copy of the SGP. If the applicant fails to do this, the trade mark application will lapse. This deadline may be extended under certain circumstances.
The “Notice of Intention to Defend” must include an Australian address for service. This may be relevant for overseas applicants who have not provided an Australian address for service when filing the trade mark.
Filing and Service of Documents
Under the Act, documents now only need to be filed with IPA. They no longer need to be served on the other side. IPA will assume responsibility for service of documents on the other side.
Once both the “Notice of Intention to Oppose” and “Notice of Intention to Defend” have been filed, the following procedure will now apply:
- the opponent has three months to file its Evidence in Support;
- the applicant then has three months to file its Evidence in Answer; and
- the opponent then has two months (previously three months) to file its Evidence in Reply;
- It is no longer possible to file further evidence.
Extensions of Time
The Act has removed the “easy” (or automatic) extension of time periods that currently exists. It will now be at the Registrar’s discretion whether an extension of time will be granted to either party in opposition proceedings.
Extensions will only be allowed where:
- The Registrar is satisfied that the relevant party has made all reasonable efforts to meet the deadline and the failure to meet the deadline occurs despite the relevant party acting diligently and promptly in respect to filing the relevant document/evidence; or
- There are “exceptional circumstances”.
If allowed, the length of the extension will be at the Registrar’s discretion and may be for a period of less than one month. This is a dramatic change to the current procedure.
Cooling Off Period
With the consent of both parties, a “cooling-off period” can be requested, by application to the Registrar, at any time after opposition proceedings have commenced. This will allow parties to conduct negotiations and research with the objective of reaching a negotiated settlement. Proceedings can be suspended for an initial period of 6 months up to a maximum of 12 months, and all parties involved in the opposition must consent. The Registrar will only grant one cooling-off period.
Hearing/Decision on the Written Record
Either party may request a Hearing after the evidence is filed. The Registrar must convene a Hearing, if requested. The Registrar may also call for a Hearing. The Registrar has a discretion whether to hold an oral Hearing or to hear the matter by written submissions.
If the Registrar decides to hear the matter in person, the opponent must file a summary of submissions 10 business days before the Hearing and the applicant must file its summary of submissions no later than 5 business days before the Hearing. Failure to comply with these deadlines can have adverse cost consequences.
Transitional Provisions Oppositions
For applications advertised for acceptance in the Trade Marks Journal on or after 15 April 2013, the new rules and procedure set out in the Act and Regulations will apply.
For applications advertised for acceptance before 15 April 2013 where a notice of opposition has not been filed, the new rules and procedures set out in the Act and Regulations will apply, save that three months will exist to file a Notice of Opposition (or “Notice of Intention to Oppose”.).
For oppositions commenced before 15 April 2013 which have not yet been set down for Hearing, the old opposition regime will apply save that the rules and procedures set out in the Act and Regulations will apply for seeking a Hearing and any extensions of time.
Brand owners should take special note of these new changes in order to effectively protect their trade marks and liaise with their legal advisors to ensure that their brand protection strategy takes account of the new regime and time limits imposed by the Act. Matters which need to be considered and reviewed should include ensuring that brand owners:
- monitor the Australian Official Journal of Trade Marks on a regular basis (at least monthly) in order to ensure that marks similar to their own are quickly identified;
- when deciding whether or not to oppose a mark, consideration is given as to whether there are adequate grounds of opposition in order to file the SGP and steps are taken to settle the SGP as soon as possible after filing a “Notice of Intention to Oppose”;
- both a “Notice of Intention to Oppose” and a SGP are filed within the specified time limits (ie “in time”) as only then is a mark treated as opposed;
- if an application is opposed by a third party, a brand owner takes prompt steps to positively defend their application early in opposition proceedings, by way of filing a “Notice of Intention to Defend” within one month of the day that they receive the SGP and that an Australian Address for Service is nominated for international trade mark applicants;
- whether opposing or defending against an opposition, brand owners are fully aware and prepared for dealing with the new regime. This will dramatically tighten the time frames available to applicants and opponents with respect to filing documents in support of or defending an opposition, in particular with respect to the preparation and filing of evidence. Extensions of time for opposition matters will be very difficult to obtain and should not be relied upon other than where all reasonable efforts have been made to ready evidence for filing or in “exceptional circumstances”. This includes extensions of time for ongoing opposition matters that commenced before 15 April 2013.
The assistance of Emma Appleby, Trade Marks Attorney, of Addisons in the preparation of this article is noted and greatly appreciated.