On 15 April 2013 a few critical changes to the Australian Trade Marks Act 1995 will become effective.
Key amendments in trade marks practice will occur in these areas:
Trade Mark Opposition Proceedings
Over the last few years, Australian trade mark opposition proceedings have been considered to be unnecessarily time consuming and costly for the parties involved. The main purpose of these changes is to streamline the current opposition process with the following amendments:
- The opposition period will be reduced from 3 to 2 months from advertisement of acceptance by IP Australia.
- The opponent will have to file the grounds in which they are opposing an accepted trade mark application within 1 month of filing a Notice of Intention to Oppose.
- The applicant will have to file a notice including the intention to defend their trade mark application in the opposition proceedings. Failure to do so on time means that the application will lapse. This last point has been brought forward with the thought of avoiding lengthy procedures in cases where the applicant is not interested in defending its trade mark application.
- The period to file Evidence in Reply has been reduced from 3 to 2 months. The timeframes in which to provide Evidence in Support and Evidence in Answer will still be 3 months.
- The opponent will not be required to serve a copy of the notice of opposition on the applicant anymore; IP Australia will notify the applicant directly regarding the opposition.
- The grant of extensions of time will become more stringent.
Presumption of Registrability
The onus of registrability within section 41 of the Trade Marks Act 1995 will shift from the applicant to the Registrar. This means that if the Registrar cannot decide whether the trade mark is distinctive or not, the decision will be resolved in favour of the applicant, that is, the trade mark will be registered.
The new client-attorney privilege will be extended to include communications between clients and foreign intellectual property practitioners.