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Australian Trademark Opposition – New Procedures & Fees

Over the past 12 months Australia has undergone a huge over haul of its Intellectual Property system. We’ve written about this a couple of times (here and here). The changes came into effect on April 15, 2013. In my opinion – in so far as trademarks are related – one of the biggest changes is the way in which oppositions will no proceed. Oppositions to the registration of new trademarks, and oppositions to requests seeking to remove trademarks are affected by the changes. Unfortunately, this also sees the need for us to introduce Fee Schedule to cover the additional stages and requirements now in play.

The new trademark opposition process is summed up below:

  • Accepted trademarks are advertised in the Official Journal of Trademarks once approved by the government office – as usual;
  • A notice of intention to oppose must be filed within 2 months of that advertisement (or an appropriate extension of time sought). This is a reduction from the previous 3 month period allowed;
  • A statement of the grounds and particulars on which the opposition is based must be filed within 1 month of the “notice of intention to oppose” being filed.

If the statement of grounds and particulars is not filed – the opposition will not proceed as it will not be considered to have been filed in full – thus, the trademark will be allowed to register.

  • The Trademark applicant must then lodge their notice to defend against the opposition – within 1 month of the statement of grounds and particulars being filed by the Opponent. This is a new requirement – previously, the Applicant did not need to voice their intentions – the opposition would simply move into evidence phases of the proceedings. By placing this requirement on the Applicant, the entire process will often prove must shorter and more cost effective than under the old system.

If an Intention to Defend is not lodged within the period allowed then the trademark application will lapse – thus, the Opponent will effectively ‘win’ and the trademark will not be allowed to register

  • The Opponent will then have three months to file evidence in support of their opposition (this remains the same as older rules) – then, the Applicant has their turn to file evidence-in-answer. Again, they are allowed three months to file such evidence, which does not change from the old system. However, any evidence in reply that the Opponent may wish to file must now be done within two months, reduced from the three months they used to have.

Other Notable Changes:

There are a few other changes worth noting:

  1. The parties in an opposition period no longer have to serve copies of notices and evidence on one another. All notices and evidence are filed directly with the Trademarks Office (through their online file sharing software) and each party can then obtain a copy directly;
  2. A cooling off period is introduced – allowing the parties to an opposition proceeding a chance to negotiate, and hopefully resolve any disputes directly with one another. This may be for up to 6 months, and 1 per opposition is allowed;
  3. The Registrar for Trademarks may direct an oral hearing or hearing by way of written submissions in opposition matters. If the hearing is an oral hearing the opponent must file a summary of submissions at least 10 business days before the hearing and the other party must file a summary of submissions at least five business days before the hearing. The failure to do so by either party may be taken into consideration by the Registrar when they are deciding the matter.

Trademark Oppositions that Commenced before the changes commenced on April 15, 2013 – PLEASE NOTE:

If an opposition commenced before the date of changes commencing (or, an application was advertised as accepted before 15 April) most of the changes still apply. Applications advertised before 15 April are still open to oppositions for 3 months, instead of the new – shorter – 2 month period. However, within the three months it is still the new ‘notice of intention to oppose’ that must be filed, followed by the statement of grounds and particulars.

Oppositions that were underway before the changes commencing must still, now, file any notices of evidence by way of the online electronic system, without needing to file paper copies on the other party to the proceedings.

New Fees:

Unfortunately, the introduction of new stages to the opposition proceedings (such as filing of a statement of grounds and particulars or filing of a notice of intention to defend against an opposition) has meant that we have had to introduce new fees for these actions. Whilst there is no official fee involved, understandably private companies and firms like ours must still cover their time. We have chosen a fixed fee for each of these services, rather than an hourly charge to ensure the ease of budgeting for our clients. Fee Schedule

We’d love to hear any questions or comments you might have on this new process. Do you think it will make for an easier, quicker and less expensive opposition process? Are you for or against these changes? How would you further improve the IP system?

 

 

 

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