Proposed Changes to Australian Opposition Procedures

4 March 2011
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Reforms for the purpose of implementing "swift and inexpensive" and "simple and straightforward" trade mark opposition proceedings are being considered by the Australian Trade Marks Office. Following is an outline of the major reforms.

The time period for filing a Notice of Opposition would be reduced from three months after advertisement of acceptance of an application to two months.  There would be no provision for extensions of time to oppose an application on the grounds of negotiations between the Applicant and potential Opponent or to conduct research to determine if an opposition is justified.

At present the grounds of opposition on which the Opponent will rely may not be known to the Applicant until shortly before the hearing or even at the hearing.  To closely define the real issues as soon as possible, an Opponent will be required to lodge a Statement of Grounds to be relied on in the proceedings supported by particulars for each ground.  The Applicant can request the Registrar to dismiss the Opposition if the Statement of Grounds and supporting particulars are not served within one month after lodgement of the Notice of Opposition.

Even where an Applicant has no interest in the proceedings, under current procedures, the Opponent is required to pursue the opposition often incurring the costs of lodging evidence in support of the opposition, giving the Applicant a three month period to lodge evidence in answer, and requesting a hearing.  Often an applicant does not participate in the opposition procedure at all.  To avoid the delay, costs and inconvenience to an Opponent in these circumstances, an Applicant will be required to lodge a notice of intention to defend the opposition.  If the Applicant does not lodge the notice within one month after being served with the Statement of Grounds, the application will lapse.

Trade Mark Applicants and Opponents can both apply for extensions of time to comply with the evidentiary stages provided by regulation and, in addition, can apply for permission to lodge further evidence.  Case law has developed in such a way as to limit the Registrar's ability to deny applications for extensions of time which is resulting in delays in proceedings.  The reforms provide for extensions of time to be restricted to cases where the Registrar is satisfied that the party requesting the extension has acted "promptly and diligently at all times since the opposition proceedings began" but still cannot serve evidence within the time required.  There would be no provision for further evidence beyond that specified in the regulations.

In recognition of the value of the negotiated settlement of oppositions, the Registrar will have the power to suspend opposition proceedings for a cooling off period of up to 12 months on the request of all parties to the opposition.

The reforms will not be reflected in the Trade Marks Act 1955. Rather the Act will be amended to grant the Registrar broad power to make Regulations to implement reforms to trade mark opposition procedure.  This will provide the Registrar with the flexibility to quickly fine tune procedures where necessary.

The Trade Marks Office intention is to introduce a bill providing for implementation of the reforms into parliament "as soon as possible but consistent with other Government priorities".  The final form of the bill is not yet public. Further details will be provided when available.