raisingthebar
1 May 2013TrademarksIke Papageorge and Madeleen Rousseau

A race against time: trademarks and raising the bar

After a thorough review of trademark procedures, trademark oppositions were identified as an area where changes needed to be made. Under the previous system, relatively long delays were allowed, but these new rules, which came into effect on April 15, 2013, are designed to force parties to resolve disputes within much shorter timeframes.

While this is good news, it has serious implications for the opposing party who will now have a much shortened timeframe to file an opposition, define, nominate and substantiate the exact grounds of opposition and to collect and finalise evidence. The trademark applicant must now also take steps to defend the opposition, which was not required under the previous system.

The Trade Marks Office anticipates that the new rules will cut opposition delays by as much as 12 months. This seems beneficial, but places immense pressure on the parties involved.

From April 15, 2013 opposition proceedings will be governed under the new regime which briefly is as follows:

• The opposition period is reduced to two months for all applications advertised after April 15, 2013.

• Opposing a trademark application requires the filing of two documents: a Notice of Opposition and a Statement of Grounds and Particulars. Both must be filed to constitute a valid opposition.

• Defending an opposition requires the applicant to file a Notice of Intention to Defend.

• Extension requests for filing evidence will be granted only for limited reasons.

• A cooling-off period has been introduced.

• Service between the parties is no longer required and all documents must be served on the registrar who will send them to the other party.

Working with the changes

All trademark applications advertised after April 15, 2013 are advertised for the reduced period of two months and extensions of time to file an opposition will be granted only in limited circumstances and where the registrar is satisfied that there has been an error or omission beyond the control of the opponent.

Opposing a trademark application will require two documents to be filed:

• Notice of Opposition: this must be filed within two months of the date of advertisement of acceptance of the application.

• Statement of Grounds and Particulars: this must be filed within one month of filing the Notice of Opposition and must clearly identify the specific grounds of objection with sufficient details to substantiate each ground. The registrar will review the Statement of Grounds and can request further details and may even dismiss the opposition.

Defending an opposition will now require the applicant to file a Notice of Intention to Defend within one month of receiving the Statement of Grounds and Particulars from the registrar—if this is not filed the application will lapse.

Once the Statement of Grounds and Particulars has been filed, the parties can jointly request a cooling-off period of six months which can be extended for a further six months by a joint request made before the end of the initial cooling-off period. However, the total coolingoff period cannot exceed 12 months.

Either party can withdraw from the cooling-off period at any time and the timetable will then commence from the date on which the coolingoff period ended.

The evidence period is affected in the following ways:

• The opponent must file evidence in support of the opposition within three months of the date of receipt of the Notice of Intention to Defend.

• The applicant must file evidence in answer within three months of the date of receipt of the evidence in support.

• The opponent must file any evidence in reply within two months of the date of receipt of the evidence in answer.

Extension requests for filing evidence will be granted only for limited reasons and negotiation with the other party is no longer accepted as a valid reason. It is possible to obtain an extension of time for filing evidence provided the registrar is satisfied that:

• The party has made all reasonable efforts to comply; and

• Despite acting promptly and diligently, that it is impossible to do so; or

• There are exceptional circumstances that justify the extension.

The registrar will then decide the length of the extended period having regard to what is reasonable. Exceptional circumstances include:

• Circumstances beyond the control of a party preventing such party from complying with the filing requirement;

• An error or omission by the registrar or an employee of the agent; or

• An order of court.

These new rules will undoubtedly shorten opposition proceedings but they will also place a far greater onus and burden on the opponent to nominate and clarify adequately the specific grounds of opposition within a month of filing the Notice of Opposition. This significantly shortens the time available within to conduct investigations and assess the merits of a matter.

We expect the Trade Marks Office to adhere strictly to the new rules which means that extensions of time to file evidence will be difficult to obtain.

The fact that the opponent is granted only three months to prepare and finalise evidence means that immediate action is required once a decision has been taken to oppose a trademark application.

And so the race against time begins in the trademark opposition landscape in Australia.

Ike Papageorge is a consultant at Herbert Smith Freehills, Perth, Australia. He can be contacted at: ike.papageorge@hsf.com Madeleen Rousseau is a senior member of the Herbert Smith Freehills IP team in Perth, Australia. She can be contacted at: madeleen.rousseau@hsf.com

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