In March and June 2009 IP Australia released a series of consultation papers proposing reforms to Australia’s patent and trade mark system.
Less than 5% of trade mark applications in Australia are opposed but the opposition procedure is an important part of the trade mark process.
The Australian trade mark opposition procedure may seem relatively nimble and inexpensive in comparison with countries where the opposition procedure is akin to litigation. However, the Australian system has a dark side. A party seeking quick resolution may be frustrated by loose rules of evidence, endless extensions and the lack of a rigorous case management system.
IP Australia sought to address some of these tensions in the June 2009 trade mark reform paper, entitled “Resolving Trade Mark Opposition Proceedings Faster”. This sets out proposals aimed at resolving trade mark oppositions in a quick, efficient and cost effective matter.
Following the consultation process, IP Australia has, in November 2009 released a further consultation paper for the purpose of obtaining views on the revised proposals. Some of the key provisions are discussed below with reference to current Australian trade mark opposition practice.
Current Australian Practice – Notice of Opposition – the document, the deadline, service and extensions
In Australia, a Notice of Opposition is due three months following the advertisement of acceptance. The Notice of Opposition is typically a generic document reciting all or most of the available opposition grounds. Evidence-in-Support is not due until three months following the Notice of Opposition. The initial deadline is for the Opponent to file the Notice and the Opponent must serve the Notice on the Applicant (through its attorney if represented) as soon as practicable.
The initial deadline for filing a Notice of Opposition is typically extended on the basis of genuine negotiations to resolve the matter and / or that the Opponent is undertaking research to decide whether to oppose and / or the grounds of opposition.
The Registrar has broad powers to amend a Notice of Opposition if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
The current procedure suits a potential Opponent, particularly a foreign Opponent, who has just become aware of an accepted Australian mark through a watch notice. They can quickly and easily take steps to preserve their position in a potential opposition without committing significant resources to the process for some time. Typically this allows for reasonable time to investigate the activities of the Applicant and in some circumstances attempt to resolve the dispute before filing the formal Notice of Opposition.
The Registrar (rather than the Opponent) will serve a copy of the Notice of Opposition on the Applicant as soon as practicable.
• Two (rather than three) months following the advertisement of the acceptance.
• Cannot be extended for the Opponent to conduct negotiations or undertake research.
• An Opponent must, within one month of filing a Notice of Opposition, file and serve a statement setting out the grounds of opposition and the particulars relating to each ground – statement of grounds and particulars (SGP).
• If the SGP is inadequate (that is, does not particularise the grounds), the Registrar may direct further and better particulars. Failure to provide further and better particulars could be considered in a costs order or result in dismissal of the opposition.
• Pleadings (the Notice of Opposition and SGP) can only be amended in very limited circumstances.
• The Registrar may dismiss an opposition if the Opponent does not serve / file the SGP and / or particularise the grounds of opposition in the SGP.
If enacted, these reforms mean that an Opponent must act quickly to investigate the Applicant’s activities (if appropriate) and formulate the case in a very comprehensive way. There may be no second chance to refine the pleadings and more limited scope to seek an extension.
Current Australian Practice – Defending an opposition by an Applicant
Following the Notice of Opposition, the next step is that the Opponent has three months to serve the Evidence in Support of the opposition.
A trade mark Applicant does not need to file any statement of defence or indeed any pleadings in opposition proceedings. In fact an Applicant may not take any steps (pleadings or evidence) subsequent to filing the initial trade mark application and if opposed, the Opponent must ultimately prove its case in order to succeed in the opposition.
This is frustrating for an Opponent, especially in a situation where an Applicant has filed the application on a speculative basis (particularly in an environment where it is easy and cheap to file an application online). If the Applicant has lost interest in the application following the opposition, the Opponent may still have to incur enormous costs to formally prove its case.
Notice of intention to defend a trade mark opposition:
• One month after the Opponent has served the SGP, an Applicant must file a notice indicating an intention to defend the trade mark application.
• The Opponent must serve a copy of evidence in support three months from the day on which the notice of intention to defend was filed.
• The intention is that an opposed application will lapse if the Applicant does not file a notice of intention to defend.
Current Australian Practice – Evidence
Evidence-in-Support (Opponent), Evidence-in-Answer (Applicant) and Evidence-in-Reply (Opponent) are due at three month intervals. The deadlines are typically extended by at least a further three months without too much difficulty. Although the Trade Marks Office has at times adopted a tough approach, the entire evidentiary process can be meandering and frustrating, particularly if the other side is deliberately tardy.
• An extension in the evidence process will only be granted if the party entitled to serve evidence in that period has acted promptly and diligently at all times in the opposition proceedings and cannot serve the evidence in that period, or where a compelling circumstance justifies the extension.
• The Registrar must not give a direction to extend a period solely because of delays caused by an agent or legal representative failing to act promptly or diligently.
• The time period for serving Evidence in Reply is to be reduced from three to two months.
Other proposed reforms include:
• Introduction of a cooling – off period of 6 months (extendable by 6 months) for parties to negotiate.
• A repeal of the provisions for further evidence.
• There are no proposed changes to the existing position on the production of documents or articles, summoning of witnesses.
• Procedure for filing and serving a summary of submissions prior to a hearing.
Interested parties are invited to make written submissions by 12 February 2010. We are happy to coordinate submissions by any foreign attorneys or trade mark owners ( firstname.lastname@example.org ) or submissions can be sent to IP Australia at MDB-Reform@ipaustralia.gov.au
Otherwise, all further developments will be reported.