The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the proposed Regulations under that Act make a number of significant changes to trade mark law in Australia which are likely to affect practice in a number of ways. One of the most significant changes will affect trade mark opposition procedures. The intended aim of these changes is to make oppositions in Australia quicker by means of a number of procedural changes. The changes will come into effect on 15 April 2013.

A summary of some of the major changes not only in opposition procedure, but also enforcement, is provided below:

Trade Mark Oppositions

The opposition period will reduce from 3 months to 2 months from the date of advertisement of the target application.

Notice of Opposition

There will be a two-step process before an opposition is deemed to be filed. An opponent must first file a Notice of Intention to Oppose and then, within one month, a Statement of Grounds and Particulars. The Trade Marks Office (the “Office”) will send a copy of both of these documents to the trade mark applicant. 

Notice of Intention to Oppose

An opponent will be required to file a Notice of Intention to Oppose a trade mark within two months from the date on which a trade mark is advertised as accepted. Under the current system, the period is three months. Practitioners and trade mark owners will need to be mindful of this change, and should consider engaging watching services and/or modifying existing watching services to report on a more frequent basis. POF has a dedicated watching service which can assist in this regard.

Statement of Grounds and Particulars

An opponent must file with the Office a Statement of Grounds and Particulars within one month from the date on which the Notice of Intention to Oppose is filed. The Statement of Grounds and Particulars must set out the material grounds upon which the opposition is based and the facts and circumstances substantiating those grounds.

The Trade Marks Registrar (“the Registrar”) is then required to assess the adequacy of the Statement of Grounds and Particulars. Should the Registrar decide that the Statement of Grounds and Particulars is inadequate, the Registrar may require the opponent to rectify any inadequacies by providing more information, or decide to dismiss the opposition.

An opponent may apply to the Administrative Appeals Tribunal (AAT) for review of a decision of the Registrar to dismiss the opposition.

Should a Statement of Grounds and Particulars not be filed, the opposition will be dismissed.

Extension of Time for filing an Intention to Oppose and/or Statement of Grounds and Particulars

A party who intends to oppose the registration of a trade mark application may request an extension of time to file a Notice of Intention to Oppose or extend the period in which a Statement of Grounds and Particulars must be filed. The request must be accompanied by a Declaration setting out the facts and circumstances which warrant the granting of additional time. The grounds for an extension of time will be:

  1. an error or omission by an employee or the person or the persons agent; and / or
  2. circumstances beyond the control of the person other than an error or omission by an employee or the persons agent.”

It will be at the Registrar’s discretion as to whether to grant an extension based on the reasons provided. Significantly, the Registrar will decide upon the length of the extension, taking into account what the Registrar deems reasonable in the circumstances.

Extension requests filed after the relevant due date will be considered provided that the trade mark is not registered.

Amendment of Notice of Intention to Oppose

An opponent may seek to amend a Notice of Intention to Oppose to correct any clerical errors or obvious mistakes.

Amendment of Statement of Grounds and Particulars

An opponent may seek to amend its Statement of Grounds and Particulars to:

  • correct errors and obvious mistakes
  •  amend a ground for opposition
  • add a new ground for opposition

The Registrar may grant such a request on terms that the Registrar considers appropriate but only if satisfied that the amendment relates to information that the opponent could not have reasonably known at the time of filing the

Statement of Grounds and Particulars.

This could prove problematic as often all/the best grounds for opposition may not be apparent until an applicant’s

Evidence-in-Answer has been considered or a copy of the official file held on the opposed application has been obtained.

Notice of Intention to Defend

A trade mark applicant must file a Notice of Intention to Defend its trade mark application within one month from the date on which the applicant is given a copy of the opponent’s Statement of Grounds and Particulars. No fee applies.

Failure to file a Notice of Intention to Defend will result in the lapsing of the trade mark application.

Evidence-in-Support

The period for the opponent to file its Evidence-in-Support remains 3 months, however, the three month period runs from the day the opponent is given a copy of the trade mark applicant’s Notice of Intention to Defend.

Evidence-in-Answer

A trade mark applicant is required to file its Evidence-in-Answer within three months from the day on which the Registrar gives it all of the opponent’s Evidence-in-Support and confirms that all of the Evidence-in-Support has been filed.

Evidence-in-Reply

An opponent must file any Evidence-in-Reply to the trade mark owner’s Evidence-in-Answer within two months from the day on which the Registrar gives the opponent all the Evidence-in-Answer and notifies it that all the Evidence-inAnswer has been filed.

Extensions of Time for Filing Evidence

Extensions of time to file evidence will be more difficult to obtain, as the threshold requirements will be stricter. Either party may request an extension, however, they will need to satisfy the Registrar that they have:

  1. made all reasonable efforts to comply with all relevant filing requirements; and
  2. “despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so”; or
  3. exceptional circumstances to justify an extension.

Significantly, the period of time granted will be at the Registrar’s discretion and based on what the Registrar considers to be appropriate.

Cooling Off Period

Once an opposition is taken to be filed (Notice of Intention to Oppose and Statement of Grounds and Particulars) the parties may enter a “cooling off” period to allow negotiations to settle the opposition. If satisfied that both parties are in agreement and the opposition has not been determined or dismissed, the Registrar may grant the ‘cooling off’ period.

The Registrar is required to allow a cooling off period of six months, and may allow an extension of another six months if satisfied that both parties agree. The Registrar cannot permit more than one extension of a cooling off period, thus the maximum period will be twelve months. A cooling off period may be discontinued if one of the parties to the opposition requests discontinuation. The opposition will resume once the cooling off period is discontinued or expires.

Hearing of Oppositions

The Registrar must hold a hearing of an opposition if requested to do so by one of the parties. Under the changes, the Registrar may decide that a Hearing be conducted even if not requested by the parties.

Oppositions to Non-Use Applications

Opposing an application for removal of a trade mark for non-use will follow the same procedure described above.

Enforcement

A number of substantial changes have been made to strengthen the enforcement of trade mark rights.

New Trade Mark Offences & Increase in Penalties for Existing Offences

The amending Act introduces new summary offences that correspond to indictable offences already in the Act.

The new summary offences have lower thresholds of fault and lower penalties.

The maximum penalty for indictable offences will increase from 2 years to 5 years.

Additional Damages in Trade Mark Infringement Proceedings

A court will be able to award additional amounts in an assessment of damages for infringing a registered trade mark

In assessing this, a court is to have regard to: the flagrancy of the infringement; the need to deter similar infringement; the conduct of the infringing party including after the infringing act and after the infringing party was notified of its alleged infringement; any benefits shown to have been derived by the infringing party because of the infringement; and all other relevant matters.

Customs and Seizure of Goods

Customs will be allowed to provide a Trade Mark owner who has lodged a Notice of Objection with information including contact details of the importer and exporter of the seized goods. Customs may also allow a Trade Mark owner to inspect seized goods, and remove seized goods for further inspection. The onus has now shifted to the importer of seized goods to make a claim for the release of the goods if they wish to have them returned.

Federal Magistrates Court to have Jurisdiction

The Federal Magistrates Court will be given jurisdiction to hear and decide Trade Mark matters.

Presumption of Registrability

The amended section 41 clarifies that the presumption of registrability applies to trade marks being considered under this section. That is, when the Registrar is unsure whether a trade mark is capable of distinguishing, the presumption of registrability should apply.