Consultation paper on opposition proceedings released

As part of a comprehensive review directed at improving the fit and function of the Australian IP system, IP Australia has released a consultation paper entitled "Resolving Trademark Opposition Proceedings Faster". The consultation paper proposes various changes aimed at resolving trademark oppositions more efficiently. 

First, the consultation paper proposes to remove the following grounds for extending the period for filing a notice of opposition:
  • conduct of genuine negotiations; and
  • undertaking research to decide whether to oppose or undertaking research as to the grounds of opposition.
The proposal is aimed chiefly at increasing public certainty as to the status of potential registered trademark rights. Thus, an extension of the period for filing a notice of opposition would be available only in case of error or omission on the part of IP Australia or the opponent, or in circumstances beyond the control of the party concerned.

The consultation paper also proposes to require that opponents provide particulars of their grounds of opposition. At the time the notice of opposition is filed, the opponent would have to specify:
  • the grounds on which the application is being opposed (as is currently required); and
  • the particulars of those grounds - that is, the material facts on which each ground of opposition is based.
This proposal seeks to ensure that opponents define their case better at an earlier stage in the proceedings.

IP Australia also proposes to provide clearer guidelines regarding the amendment of notices of opposition and statements of grounds and particulars.

In addition, the consultation paper suggests that the registrar be given the power to dismiss an opposition if the opponent has not supplied the statement of grounds and particulars as required.

Moreover, in response to a notice of opposition, an applicant would be required to provide a notice indicating its intention to defend its trademark application, but would not be obliged to provide a detailed counterstatement at this stage.

The consultation paper also proposes to limit extensions of time for providing evidence. The existing provisions on extension of time would be repealed. Any extension of time to provide evidence would be by direction of the registrar if he or she is satisfied that:
  • the party entitled to serve evidence has acted diligently but, despite that, cannot serve the evidence in that period; or
  • some other compelling circumstance requires such a direction.
Furthermore, IP Australia proposes to introduce a cooling-off period, which could be requested at any time after the notice of opposition and the statement of grounds and particulars have been filed, permitting parties to attempt to negotiate settlement. Under this proposal, the opposition would be suspended for an initial period of six months, extendible for a further six months.

The consultation paper also proposes to introduce stricter rules to curtail requests to the registrar to summon witnesses compulsorily or require the production of documents/articles. The aim is to reduce delays and ensure that the documents requested are actually relevant to the opposition. The registrar would be able to exercise these powers only if satisfied that this would substantially contribute to making the correct decision in the proceedings.

Finally, IP Australia proposes to require a summary of submissions. Parties appearing before the registrar would be required to file and serve on the other party a summary of submissions (at least five business days before the hearing date for opponents and at least two business days before the hearing date for applicants).

IP Australia has invited written submissions from interested parties regarding the proposed changes and any alternative solutions to the formulations put forward in the consultation paper. IP Australia will consider all submissions and then make recommendations to the government on the way forward. The closing date for submissions is August 17 2009.

Lisa Ritson and Rachel Kay, Blake Dawson, Sydney

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