Subject to any last minute changes to the final draft of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013, a new opposition procedure will come into force in Australia on 15 April 2013. The new procedure is set out below:
- The deadline for opposing acceptance of an Australian trade mark application is now two months from the advertisement in the Official Journal of Trade Marks.
- No extension of time to oppose is available unless there has been an error or omission by the applicant or their agent or the Registrar.
- There is no longer a requirement to serve any documents or evidence on the other party. The Registrar is responsible for sending the relevant documentation to the other party. All deadlines are calculated from the date appearing on the notice/document sent by IP Australia.
- The first step is for the Opponent to file a Notice of Intention to Oppose.
- Once the Notice of Intention to Oppose is filed, the Opponent will have one month to file a Statement of Grounds of Particulars (“SGP”). This document will have to provide information outlining the Opponent’s position and supporting the grounds of opposition including a summary of the nature of the evidence which will be filed in support of the opposition.
- The Applicant will then have one month to file a Notice of Intention to Defend the opposition. If this document is not filed, the application will be refused.
- The Opponent has three months following the filing of the Notice of Intention to Defend to prepare and file evidence in support of the opposition.
- Once the Opponent’s evidence is filed, the Applicant will then have three months to file any evidence in answer.
- After any evidence in answer is filed, the Opponent will then have two months to file any evidence in reply.
- Once all evidence is completed, the matter will be heard. At the Registrar’s discretion, the matter will be heard either by way of an oral Hearing or by the filing of written submissions.
- Extensions of time to file evidence in opposition proceedings will no longer be available except in exceptional circumstances or if the Registrar is satisfied that the party has made all reasonable efforts to comply with the deadline but despite acting promptly and diligently was unable to file its evidence in time. This applies to pending oppositions which have current evidence deadlines after 15 April 2013.
- At any time after the filing of the SGP, the parties may jointly request a one time only 6 month cooling off period during which the proceedings are suspended. An extension of the cooling off period for a further six months can be obtained if a joint request is filed before the initial 6 month period expires. The cooling off period can be terminated at the request of one of the parties and the period for filing the Notice of Intention to Defend or evidence restarts from the date the cooling off period ends (1 month for filing Notice of Intention to Defend, 3 months for evidence in support/answer, 2 months for evidence in reply).