A Retrospective: Raising the Bar on Australian Trade Mark Oppositions

Article written by: Philip Thoreau    |   Friday 11th April 2014

We reflect on the first year of the new Australian trade mark opposition procedures. The Government’s intention in making these changes was to reduce delays and simplify the process. Outlined below is a summary of the impact of these changes and our observations.

Reduced Time Delays

  • Excessive or strategic delays in opposition proceedings are no longer possible, with extensions only available under very tight criteria.
  • A one-off “cooling off” period of up to 12 months is available once a Statement of Grounds and Particulars has been filed, if the parties are genuinely negotiating settlement.

Simplifying the Opposition Process

  • Applicants are provided with a clear picture of the case they have to answer at the outset, because Opponents must file a detailed Statement of Grounds and Particulars.
  • If the Registrar considers some of the grounds in the Statement of Grounds and Particulars to be inadequately particularised, a request for the opponent to file more information can be made, or the Registrar can delete the ground that is inadequate.
  • If the Applicant does not file a Notice of Intention to Defend, the Application will lapse. The Opponent will not be required to prove its case.
  • Evidence is now filed online and served on the other side by the Registrar.

Our Observations

  • A full consideration of the grounds of opposition and evidence strategy is required at the outset.
  • Evidence deadlines are strict and key stages should be timetabled to ensure evidence is gathered, drafted, reviewed and finalised before the deadline.
  • Opposition costs are increasingly front-loaded, due to the requirement for a detailed Statement of Grounds and Particulars and the restrictions around amending or adding grounds at a later stage. Such amendments can only be made if the Registrar is satisfied that they relate to information which the opponent could not reasonably have been aware at the time of filing the Statement. 
  • Settlement negotiations often take longer than 12 months to resolve, particularly if international parties and multi-jurisdictional disputes are involved. In that case the opposition proceedings will continue and this may lead to unnecessary cost for the parties.
  • The Notice of Intention to Defend is straightforward and does not provide the opportunity to elicit “accepted” facts.  This puts the opponent to the effort and expense of having to prove all facts, even though some of these may be agreed between the parties.
  • The Registrar can delete a ground when assessing the adequacy of the Statement of Grounds and Particulars. This arguably leads to issues of interpretation being determined at this early stage on the basis of adequacy, rather than with the benefit of full legal argument. This is a greater risk for less frequently pleaded grounds or where a case does not fall squarely within a typical fact scenario of a ground such as “bad faith”.
  • The Registrar has a broad discretion to decide whether there will be an oral hearing or a consideration on the basis of written submissions only. This unfortunately removes the ability of the parties to make this decision on the basis of factors such as costs and their view of the importance of oral submissions in the particular case.

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