Important changes to trade mark oppositions in Australia

Major changes to Australian Trade Marks Opposition procedures commence on 15 April 2013. The most important changes are summarised below.

Opposition deadline reduced from 3 months to 2 months

The deadline for the first step to oppose trade mark applications advertised as accepted after 15 April will be 2 months from the date of advertisement.  Trade mark owners who maintain a watch over accepted Australian applications need to be particularly aware of this change.

Within one month of filing an initial “Notice of Intention to Oppose”, the Opponent will need to file a “Statement of Grounds and Particulars”, setting out the legal grounds on which the Opponent intends to rely. If this Statement is not filed, the Registrar may dismiss the opposition.

New Requirement for Applicants to file a “Notice of Intention to Defend”

An Applicant will now be required to file a Notice of Intention to Defend an opposition, within one month after the Statement of Grounds and Particulars. If a “Notice of Intention to Defend” is not filed, the application will be rejected.

This change is of particular importance to holders of international registrations designating Australia (IRDAs). Previously, the holder of an IRDA was not required to take any step if the IRDA was opposed, and the onus remained on the opponent to establish a ground of opposition. Under the new procedure, the holder of an IRDA must file a Notice of Intention to Defend and nominate an Australian address for service, or the IRDA will be refused.

Evidence time frames

The period of time for filing evidence in support and evidence in answer will remain at 3 months. The deadline for filing evidence in reply will be reduced from 3 months to 2 months.

It will be far more difficult to extend evidence deadlines than under the current system.

Parties to opposition procedures would be well-advised to commence the preparation of evidence at an early stage.

‘Cooling Off’ period

For oppositions filed after 15 April 2013, the Trade Marks Office may suspend the opposition for a single “cooling off” period of 6 months, if the parties consent. This may be useful where, for example, settlement negotiations are on foot.