The Intellectual Property Laws Amendment Act 2012, (the Raising the Bar Act), will introduce some important changes to trade mark opposition proceedings in Australia from 15 April 2013. The aim is to tighten up the procedures and timeframes and reduce delays in resolving oppositions. The regulations to accompany the legislative changes will provide more procedural detail and are due to issue in March.
The notice of opposition has two parts:
This must be filed within one month of lodgement of the Statement of Grounds and Particulars. If it is not filed, the Opposed trade mark lapses. If the Notice of Intention to Defend is filed, the matter then enters the Evidence cycle and each party has limited timeframes for filing its evidence.
Under these new procedures, extensions of time to serve evidence will be difficult to obtain and the Registrar has the discretion to set deadlines for service of evidence. The procedures introduce a "cooling off" period if the parties enter into genuine settlement negotiations. The cooling off period can be requested at any time during the opposition for a period of 6 months to a maximum of 12 months.
The Evidence in Support of the grounds set out in the Statement of Grounds and Particulars is in the form of a declaration (witness statement), executed by an officer of the company, proving the claims made by the Opponent, including full details of sales and promotion and marketing in Australia, supported by details of how the trade mark is used on labels, signage, photographs of products, invoices, copies of advertisements and the like. Also relevant is evidence to show the extent of reputation and goodwill in the Opponent's trade mark, and details of any evidence of confusion that has occurred as a result of the other company's trading activities, if this is relevant.
The Applicant / IR Holder will be given time to provide its Evidence in Answer (if any), and the Opponent may then file Evidence-in-reply to that evidence.
After all the evidence is in, the Opposition may, at the election of the parties, either:
There is an opportunity to appeal the decision of the Hearing Officer to the Federal Court of Australia. If there is no appeal, costs are generally awarded to the successful party and in the majority of cases, these are between AU$3000 to AU$5000.
The other matter to bear in mind is that success in an opposition, while preventing registration of the offending trade mark does not prevent the continued use of the offending trade, and objection to use may need to be dealt with by way of trade mark infringement, passing off proceedings, or proceedings under Australian consumer protection legislation.