What the changes to trademark opposition procedures will mean for you


Amendments to Australian trademark legislation come into force on April 15 2013. The regulations implementing these amendments have gone through various stages of review and IP Australia has released the latest draft of these regulations.

The objective is to reduce delays in the resolution of substantive oppositions to applications for registration and oppositions to non-use removal applications. For less frequent oppositions to amendments and extensions, the registrar will have broader powers to make directions so they may be resolved as quickly as possible.

The changes will apply to all oppositions commenced after April 15 2013 with transitional provisions applying to oppositions already underway.

This article is intended to provide guidance on how the most significant changes will impact upon trademark opposition procedures.

What an opponent will have to do:

  • The opposition documents:
    • The opposition period has been reduced from three to two months. An opponent will have to file a Notice of Intention to Oppose (NIO) within two months of advertisement of acceptance of a trademark application or advertisement of a non-use removal application. It will then have a further one-month period to file a Statement of Grounds and Particulars (SGP), which will need to describe the material facts on which each ground of opposition is based. Together, the NIO and SGP will constitute the Notice of Opposition.
    • For oppositions commenced after April 15 2013 to an application advertised before April 15 2013, an opponent will still have the current three-month period to file the NIO and then have a further one month to file the SGP.
  • Extensions - there is provision to obtain an extension to file the NIO and SGP in limited circumstances, namely error or omission, or circumstances beyond the control of the opponent.

What an applicant will have to do:

  • If an applicant wants to defend its application and contest the opposition, it must file a Notice of Intention to Defend (NID) within one month of being given the opponent’s SGP. Failure to do so will result in lapsing of its trademark application or failure of the removal application.

  • Extensions - the amending regulations do not specifically deal with extensions for filing a NID, but it appears extensions will be available under the general extension provisions of the Trademarks Act which require the applicant to establish error or omission, circumstances beyond its control or special circumstances justifying the extension to file the NID. These grounds are slightly broader than those for extending the period for filing the opposition documents.

What both parties will have to do:

  • Evidence timetable - the timetable for filing evidence has also been modified:
    • Provided the applicant files a NID, the opponent will have three months from being given the NID to file evidence in support.
    • The applicant will then have three months to file evidence in answer and the opponent will then have two months for any evidence in reply.
    • The evidence in reply period has been reduced from three months.
    • There will no longer be any opportunity to file any further evidence.

      In an opposition to a non-use removal application, if an opponent does not file evidence in support or ask for a hearing, the opposition is deemed to have ended and the applicant for removal prevails.
  • Extensions for filing evidence - the extension provisions have been tightened and the explanatory statements to the new regulations make it clear that extensions will be closely scrutinised. An extension will be available only where the requesting party has made all reasonable efforts and, despite acting promptly and diligently, is unable to file evidence within the time permitted, or there are exceptional circumstances that justify the extension.

  • Information provided to registrar - outside of the evidence procedures, there is provision for a party to provide the registrar with information which may be considered in deciding the opposition. It remains to be seen how this will be utilised to admit information which is not strictly evidence but which may have a bearing on the registrar’s decision. The explanatory statements indicate that it is not intended for this provision to be used as a substitute for the repealed further evidence provisions.

  • Cooling off/suspension of proceedings for negotiation - it will no longer be possible to seek ongoing extensions for the purpose of negotiations. Rather, the parties will be able to agree to a cooling-off period at any time after the opposition documents have been filed:
    • The opposition can be initially suspended for a period of six months which can be extended by agreement for a further six months.
    • The registrar can grant only one cooling-off period up to a maximum of 12 months.
    • Either party can request termination of this cooling-off period at any time.
    • The proceedings restart and the timeframes are reset once the cooling-off period ends.
  • Hearings - once all evidence is completed, a party may request a hearing which may be an oral hearing or by written submissions. The registrar has a discretion to exercise in deciding whether to grant an oral hearing; however, it is anticipated that oral hearings will be granted on substantive opposition matters when sought.

    While pre-hearing submissions have become more commonplace in recent time, the changes mean that there will now be a requirement for:
    • The opponent to file a summary of submissions at least 10 business days before the hearing; and
    • The applicant to file a summary of submissions at least five business days before the hearing.

      This procedure is designed to identify clearly the issues in dispute prior to the hearing and avoid any element of surprise. Failing to comply can have consequences in any costs order made.

      With regard to oppositions commenced before April 15 2013, the regulations contain transitional provisions to deal with oppositions which are already underway before April 15 2013. The manner of drafting these provisions may give rise to ambiguity and it may become necessary to refer to the explanatory statements to give effect to the intention of these provisions.
  • Evidence timetable - the old regime of evidence in support, evidence in answer and evidence in reply needing to be filed in three monthly intervals will continue to apply to all oppositions already underway where there is no hearing date or notice of a hearing issued by April 15 2013. It appears the current further evidence provisions may not apply to oppositions to registration of national trademark applications. However, it could be argued that the further evidence provisions continue to apply to oppositions to International Registrations Designating Australia (IRDAs) and oppositions to non-use removal applications. Nonetheless, it appears the intention is to repeal the further evidence provisions for all oppositions.

  • Suspension/cooling off - similarly, it may be argued that the current provision enabling the registrar to give a direction to suspend an opposition may not continue to apply to oppositions to registration of national trademark applications, but may apply to oppositions to IRDAs and oppositions to non-use removal applications. Nonetheless, it appears the intention is for the suspension provisions to continue to apply to all oppositions already underway.

  • Extensions - the new provisions dealing with extensions for evidence will apply to all extension applications filed after April 15 2013.

  • Hearings - the new regime for hearings will apply to oppositions already underway where a hearing is requested after April 15 2013. These changes to trademark opposition procedures will have a significant impact. They are designed to expedite the opposition process and will require clients to provide quite detailed and timely instructions, particularly when settling the opposition grounds and particulars. Parties will need to act promptly when preparing their evidence due to the real risk of extensions being refused, resulting in a party potentially being shut out from relying on formal evidence. Deadlines will become more critical due to the limited opportunities for extensions and the maximum suspension/cooling off period of 12 months will need to be monitored when parties are negotiating.

Sean McManis and Gerard Skelly, Shelston IP, Sydney

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