Publications / Intellectual Property

15 Mar 13
Trade mark oppositions - lifting the bar

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The Australian trade mark opposition procedure will undergo various changes from 15 April 2013 as part of the ‘Raising the Bar Reforms’ set out in The Intellectual Property Laws Amendment Act 2012 (Cth).

Aimed to reduce delays in trade mark oppositions and streamline the process, the changes relating to trade mark oppositions include:

  1. the mandatory three month opposition period will reduce to two months for all trade marks advertised after 15 April 2013;
  2. the old ‘Notice of Opposition’ will consist of two parts:
    1. a ‘Notice of Intention to Oppose’ - filed within two months of a trade mark being advertised; and
    2. a ‘Statement of Grounds and Particulars’ with the material facts of the opposition - filed one month after the Notice of Intention to Oppose.
  3. trade mark owners whose marks are opposed must file a ‘Notice of Intention to Defend’ stating an intention to defend the trade mark opposition.  The Notice of Intention to Defend must be filed within one month of receiving the Statement of Grounds and Particulars.  Importantly, if the trade mark owner fails to file a Notice of Intention to Defend, the trade mark application will automatically lapse;
  4. it will be more difficult to obtain extensions of time for filing evidence; and
  5. the parties to an opposition can agree to enter into a six month cooling off period for the purpose of genuine negotiations, which can be extended to 12 months.

What does this mean for you?

From 15 April 2013 trade mark oppositions will be quicker and more streamlined.  

Trade mark owners should:

  1. keep good records of trade mark use and history to assist with the quick review and compiling of evidence and opposition documentation;
  2. update the address for service details for trade marks as appropriate to ensure that opposition notices are received on time and the opportunity to file a Notice of Intention to Defend is not missed; and
  3. seek advice early on the process and likely success of a trade mark opposition.

Potential trade mark opponents should:

  1. ensure that appropriate trade mark watches are in place to capture all potential oppositions in time to consider them and act quickly; and
  2. seek advice early on the likely grounds for a trade mark opposition, evidence required and potential success.

McCullough Robertson offers a full service trade marks practice and can assist you with trade mark oppositions in Australia including acting as address for service on your trade marks. 

Focus covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. Focus is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.

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