The Intellectual Property Laws Amendment (Raising the Bar) Act will come into effect in Australia on 15 April 2013. Some of the main impacts on trade mark prosecution and infringement procedures are highlighted below.
For trade mark applications examined after 15 April 2013:
- The presumption of registrability applies to Section 41 (inherent capability of the mark to distinguish) so that the Registrar must accept a mark unless satisfied that it is not capable of distinguishing the relevant goods and/or services.
For trade mark oppositions commenced on or after 15 April 2013:
- the Notice of Opposition will have two components:
- a Notice of Intention to Oppose, to be filed within two months of the advertisement of the accepted application (or within three months if the advertisement appeared before 15 April 2013), and
- a Statement of Grounds and Particulars, to be filed within one month of the Notice of Intention to Oppose;
- an extension to file a Notice of Intention to Oppose can only be sought on the grounds of (i) an error or omission or (b) circumstances beyond the control of the opponent and not on the grounds of conducting research or negotiations;
- the applicant must file a Notice of Intention to Defend within one month of being given the Statement of Grounds and Particulars;
- the parties do not serve evidence on each other but rather just file it with the Trade Marks Office, which then gives a copy to the other party (this also applies to oppositions commenced before 15 April 2013 where the deadline for serving evidence falls on or after 15 April 2013);
- all evidence is to be submitted electronically unless the Registrar requests physical evidence (this applies to all oppositions on foot on or after 15 April 2013);
- the period for filing evidence-in-reply will be two months;
- the parties may agree on a one-time cooling off period of six months, extendible by a further six months, for conducting negotiations;
- assessments of extensions of time will be more stringent, requiring the party seeking the extension to show they have acted promptly and diligently at all times or that there are exceptional circumstances (this applies to all oppositions where the extension is for an evidentiary period which commenced on or after 15 April 2013);
- if attending a hearing, the opponent must file a summary of submissions at least ten business days beforehand and the applicant must file a summary of submissions at least five business days beforehand (this applies to all oppositions where the Hearing Officer did not set a hearing date or issue a hearing notification before 15 April 2013);
- a decision of a Hearing Officer can be appealed to the Federal Magistrates Court (soon to be renamed the Federal Circuit Court) as well as the Federal Court (or to the AAT if the decision was based on failure to comply with a procedural step).
The most significant reform in practice is likely to be the introduction of a procedure for a Notice of Intention to Defend in the face of opposition proceedings. Currently, many oppositions run right through to a Hearing without an applicant for registration of an opposed mark participating in any way in the proceedings. Opponents have still been required to establish a ground of opposition, in many cases supported by evidence, in circumstances where an applicant may not have even bothered to file a Notice of Intention to Defend. In the context of oppositions, it is also important to note that extensions of time to file evidence will be much harder to obtain after 15 April 2013.
Another reform of potential significance concerns the shift in onus from the applicant to the Registrar in the assessment of whether a mark is inherently adapted to distinguish the applicant’s goods or services. The reform is likely to be of relevance only in marginal cases (like most issues of onus on the balance of probabilities) and the threshold set by the Registrar on inherent distinctiveness will still be largely a matter of policy, rather than based on guiding principles of law enunciated by the courts.