Australia’s Raising the Bar amendments have substantially changed opposition proceedings. Monday’s panel will explain the new system and how it compares to other jurisdictions around the world, and how to best utilize strategic tools to coordinate your brand protection worldwide.
Moderator Michael Wolnizer of Davies Collison Cave in Australia explains that the changes are not minor and that rights holders need to be careful about meeting the stricter requirements. “It’s not a small adjustment that tweaks this and tweaks that part of the law; these are big changes.”
He continues: “In 2009, the IP office identified a number of things that it wanted to do to make the system better: it wanted to make the system faster, simpler, easier to understand, and cheaper.” He adds that though the office probably did not achieve all four goals, a number of changes are positive and the system should be better overall.
Tighter timeframes
The new system tightens up the timeline of oppositions, and perhaps more importantly, makes it much more difficult to get time extensions. For example, the period to file a Notice of Opposition has been shortened from 3 months to 2 months after the advertisement of acceptance of the mark. The challenge of meeting this shorter deadline is compounded by the fact that extensions are now only granted for “errors or omissions” or “circumstances beyond a person’s control.” Previously, extensions were granted if the party showed that it needed more time for research or to enter into settlement of negotiations.
Similarly, deadlines throughout the opposition proceedings have been tightened in order to ensure speedier outcomes. For example, the opposing party must file its evidence within three months of its Notice of Opposition, while the applicant also has three months to reply. Extensions are also more difficult to obtain and are limited to errors or circumstances beyond the party’s control.
Other changes intended to speed up proceedings may not be as successful. Under the new law, the applicant must file a Notice of Intention to Defend with one month of the Notice of Opposition. The application lapses if no notice is filed. Wolnizer notes that there is no disincentive to file this notice even if the applicant has no intention to defend the application, especially if the goal is to string out the proceedings. A fee, he suggests, would have cut down on frivolous notices.
Still, overall the changes should have a positive effect on the speed of proceedings. Wolnizer says that it should be possible to have cases resolved in about two years, while eight years was not uncommon under the previous law.
More preparation
The amendments also require opposing parties to do more preparation at the outset. Under the old system, the opposing party had to file a Notice of Opposition to initiate proceedings. After the change, a Statement of Grounds and Particulars must be filed along with the opposition notice. These statements, which plead the grounds of the case, are also used in the Australian patent system. If the statement is not sufficiently particular about the grounds of the case, the Registrar may amend or even dismiss the opposition. Amendments to the pleadings will only be granted in limited instances.
Wolnizer explained that this is one reason why the new system may be costlier than the old. “Under the previous system, the opposing party didn’t have to incur costs until it finalized its evidence. This change is not good for brand owners because most cases don’t go to hearing, as they are often settled, so now there are more costs at the outset.”
Still, Wolnizer says that the new system is an improvement especially in light of speedier proceedings. Though unfamiliarity with the new opposition system raises concern among some brand owners and a few have strategically filed earlier to conduct their oppositions under the old system, the new procedure should resolve cases more quickly.
Committees in INTA’s Policy Development and Advocacy Group participated in a series of public comments on Raising the Bar. To learn more or find out how you can get involved, contact Seth Hays, INTA External Relations Manager for Asia-Pacific, at shays@inta.org.
Strategic considerations
In addition to outlining the procedural changes, Wolnizer and Ben Fitzpatrick of the Victorian Bar will discuss some of the strategic considerations under the new Australian system. Some areas of particular importance involve the production of evidence, cross-examination and the role of the Registrar.
The panelists will also look at strategic considerations for international brands working to protect their rights worldwide. Barbara Sullivan of Henry Hughes Patent & Trademark Attorneys in New Zealand said that she thinks the Australian system should lend more certainty for brand owners, though the stricter deadlines may be a challenge at first. Perhaps more importantly, the system is more in line with international practice, including New Zealand’s. Because of this, the experience of the panelists from other jurisdictions can lend insights on how to best proceed in Australia.
For example, Sullivan notes that New Zealand’s system requires the grounds of opposition to be laid out at the outset, similar to the Statement of Particulars in Australia. She explains: “As a general message, brand owners opposing a registration need to sort out the grounds of opposition right away and they need to think about the evidence to support those grounds, earlier rather than later.”
She added: “People can’t just sit on their hands; they have to put a lot of thought into preparing the evidence in an earlier stage of the process.”
