Trade Marks (Filing Documents and Evidence­ Opposition) Direction

Trade Marks Regulations 1995. 26 Jun 2014

Part 1 - Preliminary

1 Name of direction

This direction is the Trade Marks (Filing Documents and Evidence-Opposition) Direction 2014.

2 Commencement

This direction commences on 14 July 2014.

3 Authority

This direction is made under the Trade Marks Regulations 1995.

4Revocation

This direction revokes any previous directions made by the Registrar under the Trade Marks Regulations 1995 in relation to the filing of documents or evidence for oppositions.

5Definitions

In this direction:

Objective Connect means the electronic document management system known as Objective Connect.

Note: IP Australia provides access to Objective Connect.

Regulations means the Trade Marks Regulations 1995.

Part 2 - Form and means for filing documents

6 Form for filing documents-electronic filing using Objective Connect

  1. For paragraphs 5.3(1)(b), 9.3(1)(b), 17A.30(1)(b) and 17A.48A(1)(b) of the Regulations, this section sets out the form in which a document is to be filed if it is filed electronically using Objective Connect.
  1. The document is to be in one or more of the following electronic formats:
  1. JPEG;
  2. MP3;
  3. MPEG;
  4. PDF;
  5. PNG;
  6. (f) Text;
  7. TIFF;
  8. Word;
  9. XML.
  1. The document is to be given a title in the following form:
  1. for evidence in support-"Part/balance evidence in support" or "All evidence in support";
  2. for evidence in answer-"Part/balance evidence in answer" or "All evidence in answer'';
  3. for evidence in reply-"Part/balance evidence in reply" or "All evidence in reply";
  4. for a summary of submissions for oral hearing-"Summary of submissions for oral hearing" followed by a description of the party filing the summary;
  5. for a summary of written submissions-"Summary of written submissions" followed by a description of the party filing the summary;
  6. (f) for a document that has been produced under the Registrar's discretion under section 202-"Produced document" followed by a brief description of the document being produced;
  7. for information available to the Registrar under regulation 21.19-"Available information" followed by a brief description of the information; and for oppositions commenced before 15 April2013:
  8. for further evidence-"Further evidence";
  9. for further evidence in response-"Further evidence in response".

Example 1: For paragraph (b)-All evidence in answer. Example 2: For paragraph (c)-All evidence in reply Part 1.

Example 3: For paragraph (e)-Summary of written submissions-opponent.

  1. If a document exceeds 1 GB in size:
  1. it is to be provided in more than one file, with each file less than 1 GB; and
  2. the title for each file is to:
  1. be in the form mentioned in subsection (3); and
  2. briefly identify which part of the document is contained in the file. Example: All evidence in answer-Jones declaration Part 1.

7 Form for filing evidence describing articles other than documents

  1. This section applies to evidence that describes an article other than a document if the article is not being filed.
  2. For paragraphs 5.3(1)(b), 9.3(1)(b), 17A.30(1)(b) and 17A.48A(1)(b) of .the Regulations, the evidence is to be in the form of a declaration that:
  1. describes the article; and
  2. attaches a photograph or video recording of the article as an exhibit to the declaration.

Note 1: A declaration must be in the approved form: see regulation 21.6 of the Regulations.

Note 2: Section 6 sets out additional requirements relating to the form of the evidence if it is a document filed using Objective Connect.

8 Means for filing documents and evidence

Certain documents, and evidence in the form of a document

  1. For paragraphs 5.3(1)(c). 9.3(1)(c), 17A.30(1)(c) and 17A.48A(1)(c) of the Regulations, a document mentioned in subsection (2), or evidence in the form of a document, is to be filed using:

    1. Objective Connect; or
    2. if it is not practicable to file the document or evidence using Objective Connect-a means approved in writing, for the document or evidence, by the Registrar.
  2. For subsection (1), the documents are the following:
    1. a covering letter for evidence;
    2. evidence in support;
    3. evidence in answer;
    4. evidence in reply;
    5. a summary of submissions for an oral hearing;
    6. a summary of written submissions ;
    7. a covering letter for a summary of submissions for an oral hearing;
    8. a covering letter for a summary of written submissions ; and for oppositions commenced before 15 April 2013:
    9. further evidence;

0) further evidence in response.

Other documents

  1. For paragraphs 5.3(1)(c), 9.3(1)(c), 17A.30(1)(c) and 17A.48A(1)(c) of the Regulations, any other document may be filed by:

    1. using the electronic system known as eServices channel maintained by IP Australia; or

    2. using the Alternate Lodgement Service maintained by IP Australia; or
    3. using IP Australia's emergency facsimile service; or
    4. deliyering it to the Trade Marks Office either personally or by post.

6 Form for filing documents-electronic  filing using Objective Connect

Note 1: For paragraph (a), the eServices channel could in 2014 be accessed.

Note 2: For paragraph (b), the Alternate Lodgement Service is a secondary eServices function accessed that can be invoked during outages of eServices.

Note 3: For paragraph (c), the IP Australia's emergency facsimile service may only be used under the conditions set out.

You can view a signed copy of this direction:

  • Trade Marks (Filing Documents and Evidence-Opposition) Direction 
Publish online date: 
Thursday, June 26, 2014