This is the transcript for the webinar on Advanced Trade Marks Evidence of Use Section 44

Introduction from Strat Comms

Good afternoon everyone my name is Liam from IP Australia’s Comms team.

I’d like to introduce today’s presenters Natalia and Amanda. They both work as Assistant Hearing Officers at IP Australia. Assistant Hearing Officers consider and process a number of correspondence relating to oppositions and hearings to ensure that all requirements are met and that everything is in order for the Hearing Officer to hear and decide the opposition.

I'll hand over to Natalia and Amanda and we can get underway.

Thank you for having us here. Oppositions and Hearings can be a complicated topic.

Amanda and I will aim to explain the main types of oppositions, filing requirements and common issues that may arise during opposition proceedings.

If you have any questions please send them through as we go.

There are a number of different types of Oppositions.

Oppositions can be filed against the following:

  • An application to register or protect a trade mark that has been advertised as accepted
  • An application to removal/cessation of protection for non-use
  • An application for an extension of time of more than three months
  • An application for some amendments to a trade mark application

Today we will be talking through the first two types of oppositions as these are the most common types of oppositions that we see.

Amanda will present on an Opposition to the Registration of a trade mark application and I will present on an application for the removal or cessation of protection of a trade mark registration for non-use.

Take it away Amanda.

Thanks Natalia.

An Opposition to the registration of a trade mark application is a formal objection to the registering of a trade mark that has been accepted by IP Australia.

If someone applies for a trade mark and it is accepted, any 'person' may oppose the acceptance of the trade mark application. This includes an individual or a company.  In an opposition to registration, the Opponent is the person or legal entity who opposes the trade mark application by filing and paying for a Notice of Intention to Oppose during the 2 month opposition period.

Let's take a look at the following example:

Hannah has been making and selling confectionery using the brand SWEET DAZZLE for 10 years. She hears about a new chocolate on the market called CHOCOLATE DAZZLE. She does some research and finds out that Matt, a chocolate artisan, has applied for the trade mark CHOCOLATE DAZZLE in relation to chocolates and it has been accepted by IP Australia.

 

Hannah needs to decide whether to oppose Matt’s trade mark. If so, she will need to file the Notice of Intention to Oppose within 2 months of the acceptance of CHOCOLATE DAZZLE. Then within 1 month of filing the Notice of Intention to Oppose, she will need to file the Statement of Grounds and Particulars which outlines the grounds of her opposition.

Matt is Applicant (as he applied for his trade mark) and Hannah is the Opponent (she is opposing the trade mark).

The first step to oppose an accepted trade mark is filing your Notice of Intention to Oppose within two months of the trade mark being advertised as accepted in the Australian Official Journal of Trade Marks and paying the fee of $250.

The second step is filing your Statement of Grounds and Particulars within one month of filing the notice of intention to oppose. There is no fee to file a Statement of Grounds and Particulars. If a Statement of Grounds and Particulars is not filed there will be no opposition and the trade mark may proceed to registration.

Going back to the example:

If Hannah files the Notice of Intention to Oppose and then within one month of filing that, she files the Statement of Grounds and Particulars, the opposition commences. If Hannah does not file the Notice of Intention to Oppose and the Statement of Grounds and Particulars, Matt’s trade mark may become registered.

The Statement of Grounds and Particulars sets out the grounds of the opposition. IP Australia has an official Statement of Grounds and Particulars form.

You can choose to apply for one or multiple grounds. Each ground is different and you will need to outline reasons that are specific to the grounds that you have nominated.

Some of the available grounds of opposition include similarity to an earlier trade mark, Applicant is not the owner and application made in bad faith. A description of each ground is available on the Statement of Grounds and Particulars form. It is important to read through each ground and choose the ones that apply to you.

The Statement of Grounds and Particulars stage does not require the submission of evidence, however you will need to substantiate the claims you make in the Statement of Grounds and Particulars in your evidence in support. It's important to note that IF you do file any evidence as part of your Statement of Grounds and Particulars, you may need to re-file your evidence during the relevant evidence stage or it may not be considered by the Hearing Officer as evidence.

A copy of the Opponent's Statement of Grounds and Particulars will be given to the Applicant once it has been assessed as adequate. We do not consider the merits of the claims made, only that there is sufficient information provided for the grounds nominated.

In Hanna's case, she does not have a trade mark application or registration earlier than Matt’s. In this instance, she may consider section 58 ground of opposition on the basis that she is the real owner of the trade mark by way of earlier use of SWEET DAZZLE which is similar to Matt’s CHOCOLATE DAZZLE and in the same industry. She may also consider section 60 ground of opposition on the basis that Matt’s CHOCOLATE DAZZLE is similar to her SWEET DAZZLE that has acquired a reputation in Australia in the same industry before Matt filed his trade mark. Once Hannah has filed her Statement of Grounds and Particulars and IP Australia has assessed it as adequate, a copy will be given to Matt.

What to do if your trade mark is being opposed?

If you receive an Opponent's Notice of Intention to Oppose and the Statement of Grounds and Particulars, you need to decide if you wish to defend the opposition. If so, you 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. There is no fee to file a Notice of Intention to Defend.

If you do not file a Notice of Intention to Defend, your trade mark will lapse and will not be registered. This means your trade mark will not be protected.

Looking at our example again: Now that Matt has been given a copy of Hannah's Statement of Grounds and Particulars outlining her reasons for opposing his trade mark, Matt has one month to deicide whether to defend his trade mark by filing the Notice of Intention to Defend. If Matt does not file the Notice of Intention to Defend, his trade mark will lapse and not be registered. If Matt files the Notice of Intention to Defend, it goes to the evidence stages.

This is what the life cycle of an opposition to registration looks like

This flow chart shows all the stages in an opposition to registration. However if a Notice of Intention to Oppose, Statement of Grounds and Particulars or Notice of Intention to Defend is not filed within the relevant timeframe, the opposition will end.

What the Opponent needs to file for the opposition is shown by the purple boxes and what the Applicant needs to file is shown by the green boxes.

The deadlines are normally calculated from the date that you receive notification of the previous stage, with the exception of the Statement of Grounds and Particulars. The Opponent will need to file the Statement of Grounds and Particulars within one month of filing the Notice of Intention to Oppose and not wait for IP Australia to acknowledge the receipt of it and send a copy to the Applicant.

We will talk through the evidence stages later on in this webinar. But now I will hand over to Natalia to tell you about oppositions to the removal of a trade mark for non-use.

Thank you Amanda.

An application for the removal or cessation of a trade mark registration for non-use is usually filed by any party that believe that a trade mark registration has not been used by the trade mark owner for all or some of the goods and services that the trade mark is registered for.

In an opposition to the removal of a trade mark for non use, the person who applies to remove a trade mark for non-use is the removal applicant.

The removal opponent is usually the trade mark owner HOWEVER it can also be any person or legal entity that wishes to oppose the removal application.

Let's take a look at the following example:

Lisa owns a bakery called SHAKE & BAKE DELIGHTS and has had the name registered as a trade mark for 5 years. Ben has recently opened a retail shop called SHAKE & BAKE HOMEWARES.

Ben has done some research and is worried that he won't be able to register his business name as a trade mark because of Lisa's existing trade mark registration.

Ben notices that Lisa has a registration for a range of different goods and services including home decorations and kitchen items. He is not sure if she is actually using her trade mark on all the goods and services it is registered for.

Ben needs to decide whether to apply to remove Lisa’s trade mark for non-use. If so, he can choose to apply to remove her trade mark registration in full or in part. A partial removal application could remove some of the goods and services that Lisa's trade mark is registered for.

In this instance Ben is the removal applicant (if he applies to remove Lisa's trade mark registration) and Lisa is the removal opponent (she owns the trade mark registration and would be opposing the removal of her trade mark).

As we can see from the diagram - Any person can submit an application for the removal or cessation of protection of a trade mark for non-use.

Going by our example case study, Ben would be the removal applicant and would choose to file the application for the removal of Lisa's trade mark for non-use.

Ben can submit the removal application at any time however he needs to pay the relevant fees.

Once filed, the removal application is advertised for 2 months.

Let's take a look at what you can do if you receive notification from IP Australia that your trade mark registration has been advertised for removal.

As we can see from the diagram, any person can apply to oppose the removal application of a trade mark registration within the 2 month advertised period of the removal application.

For example, if Lisa wants to oppose the removal of her trade mark, she would need to file a Notice of Intention to Oppose within the 2 months that Ben's removal application is advertised.

It's important to note that if Lisa does not file a Notice of Intention to Oppose within the advertised period, her trade mark will be removed from the register.

If Lisa does choose to file a Notice of Intention to Oppose, she must then file a statement of grounds and particulars one month from the date she files the notice of intention to oppose.

Again, it is important to note that IF a statement of grounds and particulars is not filed - the trade mark (or in this instance, Lisa's trade mark) will be removed from the register.

There is no fee to file a notice of intention to oppose or a statement of grounds and particulars.

For the removal of protection or cessation of a trade mark registration for non-use, the Statement of Grounds and Particulars sets out the facts and circumstances that support the use OR intended use of a trade mark registration.

IP Australia has an official Statement of Grounds and Particulars form that you can choose to use. This form is available on the IP Australia website.

If you do choose to use IP Australia's statement of grounds and particulars form, you need to complete PART 4 and not Part 3 of the form. Part 4 relates to your grounds for opposing the removal application. Part 3 relates to grounds for the opposition to the registration of a trade mark. 

Your reasons do not need to be detailed but they do need to provide a brief explanation of the facts and circumstances that surround the use or intended use of your trade mark.

 

Going back to Lisa's example, if she chooses to file a statement of grounds and particulars she might want to explain facts and circumstances around how she has used her trade mark.

  • These facts and circumstances may include:
  • How long she has used her trade mark for;
  • What she has used her trade mark on;
  • How she promotes or advertises her trade mark; OR
  • If Lisa has not used her trade mark on particular goods or services, reasons for why she has not used her trade mark and an explanation of whether she intends to use the trade mark in the future. 

You do not need to provide supporting evidence with your statement of grounds and particulars. It's important to note that IF you do file your evidence during the statement of grounds and particulars stage, you may need to re-file your evidence during the relevant evidence stage OR it may not be considered by the Hearing Officer as evidence.

Let's take a look at the lifecycle of an opposition to the removal of protection or cessation of a trade mark registration for non-use.

This flow chart shows all the stages in an opposition to the removal of a trade mark registration for non-use. However if a Notice of Intention to Oppose, Statement of Grounds and Particulars, Notice of Intention to Defend or Evidence in Support is not filed within the relevant timeframe, the opposition will end.

What the Removal Opponent needs to file for the opposition is shown by the green boxes and what the Removal Applicant needs to file is shown by the purple boxes.

The deadlines are normally calculated from the date that you receive notification of the previous stage, with the exception of the Statement of Grounds and Particulars. The Removal Opponent will need to file the Statement of Grounds and Particulars within one month of filing the Notice of Intention to Oppose and not wait for IP Australia to acknowledge the receipt of it and send a copy to the Applicant.

Amanda will now take you through a closer look at the Evidence stages during an opposition proceeding.

The evidence stages for an Opposition to Registration and Opposition to the removal of a trade mark for non-use are:

Firstly Evidence in Support, the Opponent has 3 months to file evidence in support of the opposition.

Then the Applicant has 3 months to file Evidence in Answer which answers to the evidence in support.

Then the Opponent has 2 months to reply to the evidence in answer in the Evidence in Reply stage. If no Evidence in Answer is filed, then there is no evidence in reply stage

The types of evidence you provide will depend on the grounds for the opposition.

Evidence typically exemplifies what you are trying to demonstrate, such as:

  • evidence that you are the rightful owner of a trade mark;
  • evidence that you have been using a trade mark from a certain date and over a continuous period;
  • evidence of how you came up with a trade mark;
  • evidence which shows that it is unreasonable for the Registrar to allow an action to occur (for example an extensions of time or the removal of a trade mark).

Here are some important considerations for Evidence:

All evidence must be in the form of a declaration.

IP Australia's declaration form can be found on our website.

Any attached documents, annexures or exhibits should be clearly identified and referred to in the declaration.

All evidence in opposition proceedings must be filed electronically through a file sharing website called Objective Connect.

The submission of evidence is subject to strict time frames.

Filing evidence on Objective Connect

Once the Notice of Intention to Defend is processed by IP Australia, both parties will be invited to join Objective Connect via email. The email invitation will be sent to the email address of the Opponent provided on the Statement of Grounds and Particulars and the email address of the Applicant provided on the Notice of Intention to Defend.

A workspace will be created for the opposition on Objective Connect. There is no fee to use Objective Connect.

All evidence needs to be uploaded to Objective Connect and not through eServices. As soon as a party uploads their evidence, all parties will be able to see it. The evidence will be acknowledged by IP Australia before it moves to the next stage of the opposition.

Now let’s take a look at extensions of time for evidence.

The time allowed for filing evidence may be extended if you can show that:

  • You have made all reasonable efforts to comply with filing requirements AND you have acted promptly and diligently at all times;
  • OR there were exceptional circumstances to justify the extension.

Examples of being prompt and diligent include a comprehensive timeline showing what you did during the evidence period.

Examples of exceptional circumstances include a flood, tsunami or a technical malfunction that prevented you from filing your evidence. A global pandemic such as COVID-19 that we are currently dealing with is also considered as exceptional circumstances. Extensions of time applications based on COVID-19 reasons are being treated in a special way. For more information, please check IP Australia's website.

Either party can apply for an extension of time to file evidence.

A fee applies to all extension requests, which is $150 per month.

You will need to provide genuine reasons for the extension.

A copy of the extension request will be given to the other party and they will be given a chance to object to the extension.

Disputed extension requests are sometimes resolved with a hearing that deals solely with the extension request.

Party negotiations are not a valid reason to request an extension of time. If you are in negotiations you may consider applying for a cooling-off period.

If a party files for an extension of time application, this does not guarantee that the extension of time will be granted.

The fee for an extension of time application is a filing fee only.

If an extension of time application is not granted, you do not receive a refund.

As mentioned, parties may consider applying for a cooling-off period to freeze the opposition proceedings if they are in negotiations.

Either party can apply for a cooling-off period at any time after the Statement of Grounds and Particulars has been processed as adequate but before the opposition is decided.

Both parties must sign the application form for a cooling-off period.

There is no fee for filing an application for a cooling-off period.

The cooling-off period lasts for 6 months. The parties can file a joint application to extend the original cooling-off period by a further 6 months.

Either party can request the termination of the cooling-off period at any time.

Now Natalia will run you through what happens after all the evidence stages are complete.

Once the evidence stages are complete, both parties in an Opposition will be given the opportunity to be heard.

If a party wants to request an oral hearing, they need to pay a $600 fee.

Alternatively, you can elect to have a decision made through written submissions only. There is no fee for this option however, there are long waiting periods for a decision to be published.

Please note that the current hearing fees are being reviewed and new fee changes will be applied on the 1st of October this year.

I will now briefly talk through what happens when an oral hearing is requested and what to expect.

Once a hearing request has been received, our administration team will scheduled a hearing date and a Hearing Officer will be allocated to hear the matter.

The parties will be notified of when and where the Hearing shall take place by official correspondence from IP Australia.

 As part of the Hearing Notice, the parties will be given the relevant dates by which to make written submissions. Usually, this is 10 business days before the Hearing for the Opponent and 5 business days before the Hearing for the Applicant.

If neither party requests an oral hearing, the decision will be decided based on written submissions.

The parties’ submissions are an opportunity for each side to present their argument. It is not an opportunity for parties to add new evidence.

In an opposition to the registration of a trade mark, the submissions should include:

Why each ground of opposition is (Opponent) or is not (Applicant) established. This should include relevant legal argument as well as how each side’s evidence supports that conclusion.

In an opposition to the removal of a trade mark application for non-use, the submissions should include:

A focus on whether the trade mark has (Opponent) or has not (Applicant) been used. Again, parties should provide relevant legal argument as well as how each side’s evidence supports that conclusion.

When you request a hearing you can choose how to attend the hearing at the time of the request.

IP Australia has the facilities to support parties attending the Hearing either:

  • In person; or
  • Through teleconference; or
  • Videoconference.

However, it is important for parties to let us know well in advance so that we can ensure adequate resources are available.

At the hearing, the Hearing Officer will commence the Hearing by reading out the formalities of the matter.

The process then proceeds in the following way:

  • The Opponent will provide their oral submissions first, followed by the Applicant.
  • The Hearing Officer will also allow each side a chance to make final comments on any issues raised during submissions.

The Hearing Officer will conclude the Hearing and reserve their decision.

Generally, it is experienced attorneys representing their clients in oppositions. However, Opponents/Applicants are not prevented from representing themselves. If you plan on representing yourself then being familiar with the following parts of the Trade Marks Manual is highly recommended:

Part 51 – General Opposition Proceedings,

Part 52 – Hearings, Decisions, Reasons and Appeals; and 

Part 55 – Costs

The Hearing Officer will take approximately 3 months to write up their decision after the hearing.

Each party will receive a copy of the decision when it is finalised.

Once the decision is published, parties have 21 days to file an appeal through the courts.

Once a hearing is schedule and a Hearing Officer is allocated to the Opposition proceeding, it is important to contact the Hearing Officer if:

There are successful negotiations between parties and the hearing is not needed.

The parties are seeking to defer the matter.

When the Parties have filed a joint request for a cooling-off period.

OR Any other reason which may impact the scheduled hearing date.

We are now towards the home stretch of this webinar. If there's anything you would like us to clarify or have any burning questions, please post them to the chat and we'll answer them at the end.

As we've covered the main content of the presentation, we will now talk through some of the common questions we receive such as the types of fees that are involved in opposition proceedings as well as other common issues that come up from time to time.

If you want to oppose or defend a trade mark application, you may want to familiarise yourself with the IP Australia Oppositions and Hearings fees.

As you can see from the table on the screen, if you intend to oppose a trade mark registration, the current fees are $250 per trade mark.

These fees are for IP Australia only.

The fees depend on the type of opposition;

The stage the opposition concludes at; AND

Whether any additional costs were involved such as applying for an extension of time.

Please note that as a result of a recent fee review, IP Australia is going to introduce some fee changes from 1st October this year. You can find a list of all the Oppositions and Hearings fees on the IP Australia website.

A common question that we get asked is whether a party needs to use a trade mark attorney.

Whilst you do not need to use a trade mark attorney, it may be useful to consider using a trade mark attorney when:

  • You are not sure of and need assistance with understanding the relevant legislation or filing procedures in an opposition matter;
  • During the evidence stages of an opposition; OR
  • If either party requests a hearing.

Often seeking legal advice at the start of an opposition proceeding may be beneficial to deciding if you should oppose or defend a trade mark application or registration.

HOWEVER - It is important to consider the benefits and associated fees with using a trade mark attorney.

Finally, I would like to highlight some tips for everyone who is thinking about applying for a trade mark OR has a current trade mark registration.

One of the most important things you can do is regularly check your eServices account for correspondence – even if your trade mark is registered.

If you are receiving correspondence via post, please call the IP Australia Call Centre to enquire about linking your eServices account in order to receive correspondence electronically.

If you are considering opposing a trade mark OR your trade mark is being opposed:

 Check and diarise all due dates in an opposition proceeding;

Consider seeking legal advice from a registered trade mark attorney; AND

If you need help with understanding the oppositions or hearings procedures, please call IP Australia for assistance. Amanda and I are always happy to have a chat about any questions relating to oppositions matters.

 

Last updated: 
Tuesday, September 1, 2020