Trade Mark Oppositions
2 Apr 2013
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into full effect on 15 April 2013. Trade mark oppositions is one of the areas that will see significant change as a result of the reforms. This information is provided to help you understand the changes.
The changes being implemented are broken down into the following categories:
- Opposition period
- Notice of opposition
- Notice of intention to oppose
- Statement of grounds and particulars
- Extension of time to file a notice of intention to oppose or a statement of grounds and particulars
- Notice of intention to defend
- Cooling-off period
- Evidence
- Giving of documents and evidence
- Hearings
Opposition period
The opposition period has been reduced from three to two months for:
- trade marks and International Registrations Designating Australia (IRDAs) advertised as accepted on or after 15 April 2013
- removal applications and applications for cessation of protection for non-use advertised on or after 15 April 2013.
The opposition period will continue to be three months for trade marks and IRDAs advertised as accepted before 15 April 2013. The opposition period will also continue to be three months for removal applications and applications for cessation of protection which were advertised before 15 April 2013.
Notice of opposition
The notice of opposition has been separated into two components for substantive oppositions:
- a Notice of Intention to Oppose
- a Statement of Grounds and Particulars
A notice of opposition is taken to be filed when both the Notice of Intention to Oppose and the Statement of Grounds and Particulars has been filed with IP Australia.
Notice of intention to oppose
The Notice of Intention to Oppose is the first component of the notice of opposition. It indicates the opponent's intention to oppose the registration or removal of a trade mark.
To commence an opposition proceeding on or after 15 April 2013, the opponent is required to file a Notice of Intention to Oppose. The Notice of Intention to Oppose must be filed with us within the two (or three) month opposition period. We will give a copy of the notice to the other party.
The fee to file a Notice of Intention to Oppose registration or extension of protection is $250. The fee to file a Notice of Intention to Oppose removal or cessation of protection is $150.
If the proceedings are an opposition to cessation of protection of an IRDA, the opponent must provide an address for service in Australia with the Notice of Intention to Oppose, or soon after.
A Notice of Intention to Oppose may be amended at any time to record that the identity of the opponent has changed, or to correct a clerical error or obvious mistake.
Statement of grounds and particulars
The Statement of Grounds and Particulars is the second component of the notice of opposition. For opposition to registration/protection, the statement sets out the grounds of opposition and provides material facts to support those grounds. For opposition to removal or cessation of protection, the statement sets out the grounds for removal and provides material facts supporting the opposition to the removal grounds.
The opponent is required to file a Statement of Grounds and Particulars with us within one month of filing the Notice of Intention to Oppose.
There is no fee for filing a Statement of Grounds and Particulars.
If the opponent does not file a Statement of Grounds and Particulars there will be no opposition as a complete notice of opposition has not been filed.
A Statement of Grounds and Particulars is not applicable if the opposition proceeding was commenced by filing a Notice of Opposition before 15 April 2013.
Adequacy
The Registrar must assess the adequacy of the Statement of Grounds and Particulars. If the statement is adequate we will give a copy to the other party.
If the statement is not adequate, the opponent may be directed to file more information. If the additional information does not rectify the inadequacy, the Registrar may delete some or all of the inadequate material from the statement or dismiss the opposition.
Amendment
A Statement of Grounds and Particulars for opposition to registration or protection may be amended to:
- correct an error or omission in the grounds or particulars
- amend a ground of opposition
- add a new ground of opposition
- amend the facts and circumstances forming the grounds
Requests to amend or add a new ground of opposition will only be granted if they relate to information that the opponent could not have been reasonably aware of at the time of filing the Statement of Grounds and Particulars.
A Statement of Grounds and Particulars for opposition to removal or cessation of protection may be amended to correct an error or omission or to amend or add facts or circumstances that form the basis of the opposition to cessation of protection.
Extension of time to file a notice of intention to oppose or a statement of grounds and particulars
The time to file a Notice of Intention to Oppose or a Statement of Grounds and Particulars may be extended in certain circumstances.
A request for an extension of time to file a Notice of Intention to Oppose or a Statement of Grounds and Particulars may be made on either or both of the following grounds:
- an error or omission by the person, the person's agent, the Registrar or an employee
- circumstances beyond the control of the person, other than an error or omission by the person, the person's agent, the Registrar or an employee
Notably, genuine negotiations and genuine research are not grounds for requesting an extension of time to file a Notice of Intention to Oppose or a Statement of Grounds and Particulars.
The request must be accompanied by a declaration stating the facts and circumstances forming the basis of the grounds.
The fee for filing an application for an extension of time to file a Notice of Intention to Oppose or Statement of Grounds and Particulars is $150 per month.
Notice of intention to defend
The Notice of Intention to Defend is filed by the trade mark owner or removal applicant. It indicates their intention to defend the trade mark or removal application.
The applicant must file a Notice of Intention to Defend with us within one month of being given a copy of the Statement of Grounds and Particulars.
If the proceedings are an opposition to an IRDA, the holder must file an Australian address for service with the Notice of Intention to Defend.
There is no fee for filing a Notice of Intention to Defend.
The regulations do not contain specific provisions in relation to requesting an extension of time to file a Notice of Intention to Defend. However an extension of time to file a Notice of Intention to Defend may be requested under section 224 of the Trade Marks Act 1995.
If a Notice of Intention to Defend is not filed the trade mark application will lapse or the IRDA will not be protected in Australia. In an opposition to removal of a trade mark, failure to file a Notice of Intention to Defend will result in the trade mark not being removed from the Register or protection of the international trade mark will not cease.
A Notice of Intention to Defend is not applicable if the opposition proceeding was commenced by filing a Notice of Opposition before 15 April 2013.
Cooling-off period
A cooling-off period has been introduced to facilitate negotiations during opposition proceedings. Both parties must agree to the cooling-off period.
A cooling-off period can be requested after a Statement of Grounds and Particulars has been filed but before the Registrar has made a decision on the opposition or dismissed the opposition.
The cooling-off period is initially for six months and can be extended for a further six months. However, only one cooling-off period is allowed per opposition.
Either party may request the cooling-off period to be discontinued. When the cooling-off period ends, either by discontinuation or expiry, the opposition resumes and the relevant stage of the proceedings restarts. For example, if the cooling-off period began during the evidence in support stage, the opponent would have 3 months from the day the cooling-off period ended to file evidence in support.
There is no fee for requesting a cooling-off period.
A cooling-off period is not applicable to opposition proceedings commenced by filing a Notice of Opposition before 15 April 2013.
Evidence
In opposition proceedings commenced on or after 15 April 2013, the period for filing evidence in reply has been reduced from 3 months to 2 months. The period for filing evidence in reply is unchanged in opposition proceedings commenced before 15 April 2013.
The period for filing evidence in support and evidence in answer is still three months.
The option to apply for permission to file further evidence is not available in opposition proceedings commenced on or after 15 April 2013.
Extension of Time for Filing Evidence
The new regulations narrow the circumstances in which an extension of time to provide evidence will be granted.
The period to file evidence may be extended if the party has made all reasonable efforts to comply with 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 there are exceptional circumstances.
Exceptional circumstances include: a circumstance beyond the control of a party; an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement; an order of a court or a direction by the Registrar that the opposition be stayed.
The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
The fee for requesting an extension of time to file evidence is $150 for each month or part of a month for which the extension is sought.
The new provisions apply where an extension of time is requested for an evidentiary period that commences on or after 15 April 2013. For example:
- if the period for filing evidence in support commenced on 20 April 2013, a request for an extension of time to file the evidence in support would be considered under the new provisions.
- if the period for filing evidence in support commenced on 5 April 2013, a request for an extension of time to file the evidence in support would be considered under the old provisions.
Giving of documents and evidence
Parties in opposition proceedings are no longer required to serve documents and evidence on each other. From 15 April 2013, parties are required to file documents and evidence with us. We will give a copy of the document or evidence to the other party.
Evidence in opposition proceedings must be submitted to us electronically from 15 April 2013. For more information please see the IP Reform Fact Sheet - Removing the Concept of 'Service' for Oppositions.
Hearings
The new regulations provide that a hearing may, at the Registrar's discretion, be an oral hearing or by written submissions.
If the hearing is an oral hearing the opponent must file a summary of submissions at least 10 business days before the hearing and the other party must file a summary of submissions at least five business days before the hearing.
The Registrar may take a failure to file a summary of submissions into account when making an award of costs.
Last Updated: 10/4/2013
