As previously reported, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was enacted on 15 April 2012. While the main changes in the Act pertain to Patent law, other legislation was also affected, including Trade Mark legislation. In particular there is an aim to effect changes which will reduce delays in third party opposition proceedings against the registration of a trade mark application.
The relevant changes introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 will come into effect of 15 April 2013.
After IP Australia has formally accepted a trade mark application for registration, a third party is entitled to commence an opposition against the registration of the mark by filing a notice of opposition. Currently, an opponent has a three month period from advertisement of acceptance to file the notice; although this can be readily extended by a further three months. After filing the notice of opposition, the proceedings head into an evidence stage, the first evidence stage being the opponent’s evidence-in-support. Currently, evidence-in-support is to be completed within three months of the notice of opposition being filed. Fairly lenient extension of time provisions mean that in practice the evidence-in-support may not be required to be completed for a much longer period. Following the evidence-in-support, the applicant may counter with evidence-in-answer. In effect, this is the first part of the opposition proceedings in which the applicant makes any contribution. This could potentially be a year since the opposition began. The applicant also has time (readily extendible) before completing evidence-in-answer.
In practice, until the applicant does anything, which could now be 18 months after the opposition began, the opponent has no idea of gauging whether the applicant is really going to defend the mark. By which point, the opponent has obviously spent considerable time and money.
A key change that will come into effect on 15 April 2013 is the introduction of an additional step in the opposition proceedings. Following the filing of a notice opposition by an opponent, the applicant ‘may’ file a notice of intention to defend the mark. This is not as optional as it ‘may’ appear as the consequences of not doing so will result in the application being taken to have lapsed, thus ending the opposition at a very early stage.
While this is one change that is to be effected to opposition proceedings under the Trade Marks Act, further changes to the opposition proceedings are afoot under new Regulations which have yet to be finalised. The Regulations govern aspects of procedural timing and rules concerning extensions of time. It is understood that the intention will be to cut a number of the deadline periods for the opposition stages and toughen the requirements for obtaining extensions of time. Therefore, we will have to stay tuned to see how the timing issues are affected.
by Simon Ellis
