The implementation of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and proposed Regulations under that Act will have a significant impact on current trade mark practices. A key aim of the change is to speed up the trade mark opposition process through a number of changes to the current procedure. The IPT Alert team takes a look at the changes which come into effect on 15 April 2013.

Trade mark oppositions

  •  The opposition period will be reduced from 3 months to 2 months from the date of advertisement.
  • There is a two-step process to file an opposition:
  1. an opponent must file a Notice of Intention to Oppose
  2. then within one month file a Statement of Grounds and Particulars.
  •  The Trade Marks Registrar assesses the adequacy of the Statement of Grounds and Particulars, and can require the opponent to rectify any inadequacies by providing more information, or decide to dismiss the opposition altogether.
  •  Grounds and Particulars can only be amended or added to the Statement if the Registrar is satisfied that the amendment or addition relates to information that the opponent could not have reasonably known at the time of initial filing of the Statement.
  • A trade mark applicant must file a Notice of Intention to Defend its application within one month after the date on which the Trade Marks Office gives the applicant a copy of the opponent’s Statement of Grounds and Particulars. Failure to do so will cause the application to lapse.
  •  The period for the opponent to file Evidence in Support remains three months, but this now runs from the day the opponent is given a copy of the applicant’s Notice of Intention to Defend.
  •  The deadline for filing Evidence in Answer will remain at three months, but the deadline for Evidence in Reply will be shortened to two months.
  • The concept of ‘service’ for oppositions has been removed. Parties will no longer be required to serve evidence and documents upon each other – IP Australia will receive and give all documents and evidence to the other party, in electronic form. Physical evidence should not be filed unless requested by the Commissioner / Registrar.
  • Provisions and fees relating to Further Evidence have been removed.
  • The threshold requirements for obtaining extensions for filing evidence will be higher, so they will be harder to get. The party requesting the extension must satisfy the Registrar that it:
    • has made all reasonable efforts to comply with all the relevant filing requirements, and 
    • despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so, or 
    • has encountered exceptional circumstances that justify an extension.
  • The period of time granted in extension will be at the Registrar’s discretion, based on what the Registrar considers to be appropriate.
  • There will be a Cooling Off Period: if all parties agree, the Registrar can suspend the opposition for six months. The six months can be extended for a further six months (but the entire suspended period cannot go beyond 12 months). There are further changes to Section 41 of the Trade Marks Act relating to whether a trade mark is taken to be capable of distinguishing. There is a presumption of registrability if the Registrar is unsure whether a trade mark is capable of distinguishing.

Section 41

This section has been rearranged, with the tests reformulated in the negative. Sections 41(2) and (3) replace current s 41(3) and (6):

  •  A trade mark is taken not to be capable of distinguishing if:
    • The trade mark is “not to any extent inherently adapted to distinguish” the designated goods or services from those of others, and
    • “the applicant has not used the TM before the filing date in respect of the application to such an extent that the TM does in fact distinguish the designated goods or services as being those of the applicant”.

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

Additional damages

New section 126(2) – Court may award additional damages if appropriate, having regard to:

  • flagrancy of the infringement
  • need to deter similar infringements
  •  conduct of the infringer:
    •  after the infringing act, or 
    • after being informed that it had allegedly infringed
  • any benefit accrued to the infringer
  • all other relevant matters.

This change makes the Trade Marks Act consistent with section 115(4) Copyright Act, section 122(1A) Patents Act.