If there are prospects for the opposition to be settled amicably (and there almost invariably are), it is best that the opposition be suspended early in the evidence stages to give the parties the best chance to resolve the matter at the least possible cost.
What happens after an opposition is defended?
Once the applicant files a notice of intention to defend, the Registrar will notify the opponent, and the evidence phase will commence.
Trade mark oppositions are decided having regard to two main things.
The purpose of evidence is to establish facts that a party might wish to rely on in the opposition. For example, if an opponent is claiming that a trade mark was filed in bad faith, then the opponent might file evidence of previous dealings between the opponent and the applicant. Similarly, if an opponent is claiming that they have a reputation in their trade mark, they need to substantiate this with evidence that indicates this reputation actually exists.
This is argument from the parties that the facts, law and evidence support their case. This is usually technical in nature and refers to the legislation and relevant case law.
Some oppositions are based more heavily on evidence (e.g. oppositions based on bad faith or reputation) and others are based more heavily on legal argument (e.g. similarity of trade marks).
Who has the ‘burden of proof’?
A trade mark is ‘innocent until proven guilty’.
The opponent must prove their case. This is done on the balance of probabilities, which means that it is more likely than not that what the opponent is alleging is true. The opponent need only prove one ground of opposition in order to succeed. However, some grounds may only apply in respect of some goods or services, so it possible for both an opponent and applicant to be partially successful.
What is the process for filing evidence?
Evidence is filed in multiple stages.
Stage 1: Evidence in Support (filed by the opponent)
The opponent is given three months, from the Notice of Intention to Defend, to file Evidence in Support. The opponent is not obligated to file any Evidence in Support. However, some grounds of opposition will inevitably fail if no evidence is filed.
Stage 2: Evidence in Answer (filed by the applicant)
After receiving the Evidence in Support, the applicant has three months to file Evidence in Answer. The applicant is at liberty to file whatever information they please as Evidence in Answer, or nothing at all.
Stage 3: Evidence in Reply (filed by the opponent)
After receiving the Evidence in Answer, the opponent has two months in which to optionally file Evidence in Reply. This must usually relate to material filed by the applicant as Evidence in Answer. In many cases, Evidence in Reply is not filed.
Each party may also file evidence after the formal evidence stage is complete. The acceptance of this evidence is at the discretion of the Registrar. Normally, there would need to be compelling reasons before such evidence is accepted.
What happens if a deadline is missed?
It is possible to obtain an extension of time for deadlines missed during the opposition process.
In the past, extensions of time were very easy to obtain. This resulted in some trade mark oppositions taking several years to complete. However, since 2013, it has been much harder to obtain extensions of time. The Registrar will require persuasive reasons for the granting of any extension, and extensions can only be granted on certain grounds.
It is therefore prudent to comply wherever possible with relevant deadlines, and not rely on requests for extensions of time. Failure to meet relevant deadlines can lead to failure in the proceedings, and loss of trade mark rights.
What happens when all the evidence is filed?
Once all evidence has been filed, the case is ready to be heard. The matter will be allocated to a delegate of the Registrar. This delegate is called a Hearing Officer.
Each party can elect to file written submissions and/or be heard at a formal hearing. The hearings take place in Canberra, but a party can choose to appear by telephone or video link.
There is no obligation to appear at a hearing or to file written submissions. For instance, a party may be content to rely simply on the evidence they have filed. However, a party’s chances of success can decrease significantly if they elect not to file written submissions or appear at the hearing.
Who appears at the hearing?
This depends on the preference of each party. Often, a single trade marks attorney or solicitor will represent a party. However, in some cases, a barrister may also be engaged and instructed by a solicitor or attorney.
The decision who to send to a hearing depends on the complexity of the case and the budget of the party. Sometimes a barrister can bring significant value and the cost may be justified. In other cases, a barrister may be an unnecessary expense. Further, having a barrister appear is by no means a guarantee of success.
Larger companies will often engage a barrister to appear, even on simple matters. Smaller companies or sole traders will often rely on a solicitor or trade marks attorney.
What happens at the hearing?
A hearing is like a small court case, but without the formality. Generally, the opponent presents their submissions, followed by the applicant. Each side is then given time to make some final comments.
A hearing usually lasts between 2 to 3 hours, however; it is also possible for a hearing to last for an entire day.
There are no formal rules of evidence in a hearing. This means that ‘objections’ to evidence cannot be taken, although a party can raise doubts about the weight that should be given to evidence.