To be published in the Australian Official Journal of Trade Marks on 17/12/2015

Evidence filed out of time in trade mark opposition proceedings

The Registrar frequently receives requests that evidence filed out of time in trade mark opposition proceedings be considered when the merits of the opposition are determined.  Since the Registrar is not bound by the rules of evidence, she is able to inform herself on any matter subject to a hearing in a way that she reasonably believes to be appropriate. However, the Registrar and her delegates will be hesitant to exercise that discretion for evidence filed out of time in opposition proceedings unless there is a compelling case for doing so. The onus for making this compelling case falls on the party filing the late evidence. Part 51.2 of the Trade Marks Office Manual of Practice and Procedure has recently been updated to include considerations relevant in the assessment of whether a compelling case has been made out, and the procedure for dealing with these requests.

Updated content of the Trade Marks Manual of Practice and Procedure - Part 51.2.6:  Evidence filed out of time

The decision in a trade mark opposition is an administrative decision and it is not final. The parties have the option of having the matter decided by a court. Proceedings in court are more expensive to conduct than proceedings before the Registrar and are likely to take longer. However, that is not sufficient reason to deviate from the principle that an opposition proceeding before the Registrar should be conducted as efficiently and predictably as possible. As a general rule evidence that is not filed in time is not considered by the delegate when deciding the opposition.

Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party. The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account. The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).

The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered. The issues the filing party needs to address in its submissions include:

  • Why the evidence was filed after the due date
  • If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
  • What the evidence shows
  • Why that information is crucial to the delegate's decision
  • Why it is in the public interest to have the information considered
  • What is the balance of convenience for the parties if the information is considered.

Out of time evidence must be filed on Objective Connect together with the submissions in support of its consideration. The Registrar will advise the other party that the material has been filed and that no decision will be made until the evidence stage of the opposition has ended and one or both parties have asked to be heard. At that time the delegate who is to hear the opposition will decide whether or not there is a compelling case for the information to be considered.

If the delegate is not satisfied that there is a compelling case, both parties will be advised that the matter will proceed to hearing and decision based on evidence that has been properly filed. If the delegate is satisfied there is a compelling case, the other party will be given an opportunity to make representations in the matter before the delegate decides whether or not to consider the information.

Publish online date: 
Monday, December 21, 2015