Over one year has passed since the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 ("RTB") came into force on 15 April 2013.  The RTB significantly changed trade mark opposition case management and procedures in Australia.  This article examines the impact that the RTB changes have had in the first year of operation.

Summary of Key Raising the Bar Changes

The RTB reforms were intended to improve the efficiency of trade mark oppositions in Australia.  Key changes were:

  • the reduction of the opposition period from 3 months to 2 months;
  • opponents must file a "Notice of Intention to Oppose" followed by a "Statement of Grounds and Particulars" ("SGP") stating the grounds and particulars upon which it intends to rely;
  • it is no longer possible to seek an extension of time to file the Notice of Intention to Oppose or evidence on the ground that the parties are negotiating or on the basis that further time is required for investigations;
  • two 6 month cooling off periods may be requested after the SGP has been filed, but only with the consent of both parties; and
  • formal provisions allowing for filing Further evidence after the normal evidentary stages, have been removed.

Impact of RTB to date

The following table provides a comparison of the number of opposition requests made before and after the RTB reforms were introduced:

Click here to view image.

The data demonstrates that there has been a significant reduction in the number of requests for extensions of time to file the Notice of Opposition/Intention to Oppose but an increase in the filing of such Notices.  This may be the result of no longer being able to obtain an extension of time to file the Notice of Intention to Oppose on the ground of research and negotiations and the shortened opposition period, which might encourage filing the Notice of Intention to Oppose to preserve an Opponent's position while it decides whether it will pursue opposition.

Applications for extensions of time to file evidence have also reduced, which may be attributed to the increased difficulty in obtaining extensions.  In order to be granted an extension of time to file evidence, the applicant must demonstrate that they have made all reasonable efforts to comply with filing requirements and that they have acted promptly and diligently at all times.  The Trade Marks Office has to date interpreted this provision fairly strictly.

Unintended Consequences and Issues Yet to be Ironed Out

  1. Although there has been an increase in the number of parties seeking suspension/cooling-off since the RTB reforms came into effect, it is apparent that some parties, despite being actively engaged in negotiations, do not consent to cooling-off period for strategic reasons.  Apart from the proper conduct of good faith negotiations, a party who does not have an upcoming evidentiary deadline has little incentive to agree to enter into a cooling-off period.  This places extensive pressure on the other party to file evidence within the statutory period, as under the Regulations, the conduct of negotiations are specifically excluded as a factor supporting an extension of time to file evidence.  Accordingly, if parties are negotiating but one party does not agree to a cooling off period, it is currently in the best interests of the other party to continue with evidence preparation notwithstanding the likelihood that the matter will settle.

This unintended consequence has been raised with IP Australia through the Institute of Patent and Trade Mark Attorneys (IPTA) and it is hoped that this loophole will be fixed in the near future.  

  1. The limited grounds available to parties to seek an extension of time to file evidence also raises some concerns with regard to the inadvertent waiving of attorney-client privilege.  In particular in order to be satisfied that a party has made all reasonable efforts to comply with filing requirements and has acted promptly and diligently at all times, the Office has in some cases required an extension of time applicant to provide a time line of events describing what steps the applicant has taken during the evidentiary period.  In order to provide such a time line, a description of both the attorney's and their client's conduct will be relevant.  Care must be taken to ensure that sufficient information is provided to satisfy the Office but not to the extent that attorney-client privilege is inadvertently waived. Once again this issue has been raised with IP Australia through IPTA in the hope that the Trade Marks Office will modify its practice.