Patent and Trade Mark Attorney work live and die by deadlines.  Here we consider opposition deadlines, including the dreaded missed deadline.

Australia's 2012 "Raising the Bar" intellectual property reforms were designed to improve the efficiency of trade mark oppositions in Australia.  The reforms resulted in more rigorous deadlines and timelines for Opponents, Applicants and attorneys.  However, ironically the Australian opposition procedure is currently prolonged due to IP Australia backlog.

The Initial Opposition deadlines

Opposition to the registration of a trade mark begins with filing a Notice of Intention to Oppose (NIO) and paying the accompanying official fee.  The NIO must be made within two months of the trade mark being advertised as accepted in the Australian Official Journal of Trade Marks.

The NIO is followed by a Statement of Grounds and Particulars (SGP) within one month of filing the notice of intention to oppose.  There is no official fee to file an SGP.

Once the trade mark Applicant has been provided with copies of the SGP, they have one month to file a Notice of Intention to Defend (NID).

The NID is a brief document which states only that the Applicant intends to defend the opposition.

If no NID is filed, the trade mark application will lapse, and the Opponent will win by default.  The introduction of the NID and default judgment was a welcome Raising the Bar reform because previously, an Opponent was required to prove their case, even where the Applicant did not participate in the opposition.

Extending the NIO and SGP deadlines

Australia's 2012 "Raising the Bar" intellectual property reforms were designed to improve the efficiency of trade mark oppositions in Australia.

It is no longer possible to seek an extension of time to file the NIO or evidence on the ground that the parties are negotiating or on the basis that additional time is required for investigations.

No extension of time for filing the NIO and SGP is available unless there has been an error or omission by the Applicant, their attorney, or the Registrar.

The limitations are such that extensions are only possible in exceptional circumstances.

TIP - If an opposition is even only vaguely contemplated, it is preferable to preserve options by immediately resolving to file a NIO or by filing a NIO.  The Opposition can easily be withdrawn later with no consequences - Refer Cost benefit analysis

Mistakes Happen

Like most trade mark regimes, it is generally possible to correct an error or omission in Australia.

However, the options are nuanced, and care is required in seeking an extension and in providing instructions for an extension.

• Simply failing to file a NIO will not establish an "error or omission".
• The Opponent must have formed an intention to oppose before the opposition deadline.
• An extension might also be possible if the Opponent had intended to get to an informed position about opposing or not opposing during the relevant period. [1]
• It is not possible to omit to do an action if you are unaware that the action needs to be done. [2]
• The Registrar would unlikely grant the extension becuase someone merely "forgot" to carry out an action. [3]
• The error or omission must have thwarted the intention.

TIP - There is an extensive body of case law dealing with extension with complex criteria.  If a deadline is missed, it is preferable to initially schedule a discussion with an Australian attorney to understand the subtle issues, and so that clear instruction can be obtained from the Opponent.

Exceptional Circumstances

This option is a force majeure provision.

The situations encompassed by this provision include such things as "wars and terrorism, industrial action (strikes, lockouts), machinery breakdowns, arson and vandalism, and the forces of nature such as storms, earthquakes and floods."[4]

Opposition Evidence

The opposition evidence stages are as follows:

Stage 1 - Evidence in Support (the Opponent)

The Opponent has three months from the Notice of Intention to Defend to file Evidence in Support. The Opponent is not obligated to file any Evidence in Support.  However, some evidence of use is typically required to make out most opposition grounds.

Stage 2 - Evidence in Answer (the Applicant)

After receiving the Evidence in Support, the Applicant has three months to file Evidence in Answer. The Applicant may elect to file no Evidence in Answer and argue the matter based on the Evidence in Support.  This would deny the Opponent the opportunity of filing further evidence in the form of Evidence in Reply.

Stage 3 - Evidence in Reply (the Opponent)

After receiving the Evidence in Answer, the Opponent has two months to optionally file Evidence in Reply. This Evidence in Reply should relate to material and issues address in the Applicant's Evidence in Answer.

Each party may also file evidence after the formal evidence stage is complete. The acceptance of this evidence is at the discretion of the Registrar. There would need to be compelling reasons before such evidence is accepted, for example, evidence or information which was not previously available.

Extensions -Opposition Evidence

Under regulation 5.15(2), an extension of time for filing evidence in a trade mark opposition will only be granted if:

1. the party has made all reasonable efforts to comply with filing requirements and has acted promptly and diligently at all times to ensure the filing of the evidence; or
2. exceptional circumstances exist.

It is now very difficult to obtain an extension of an evidence deadline, and the conduct of the party seeking an extension will be closely scrutinised.  A decision to delay gathering evidence because settlement is being explored or pursued will not be support an extension request. [5

Tip - Aim to prepare evidence in compliance with a deadline even if it seems that the matter may settle.  Also, an Opponent must file its best evidence at the Evidence in Support stage because if the Applicant files no evidence, there may be no opportunity to file evidence again.

Cooling-off

A cooling-off period may be requested at any time after a statement of grounds and particulars has been filed but before IP Australia has made a decision on the opposition or dismissed the opposition.

However, despite being actively engaged in negotiations, some parties do not consent to a cooling-off period for strategic reasons.  A party that does not face an imminent evidence deadline might have little incentive to agree to enter into a cooling-off period. This position places extensive pressure on the other party to file evidence in compliance with the deadline because the conduct of negotiations is specifically excluded as a factor supporting an extension of time to file evidence.

Tip - it is best practice to secure cooling-off at the earliest opportunity and, if that is not forthcoming, aim to prepare evidence in compliance with a deadline even if it seems that the matter may settle.

Opponents, Applicants and their attorneys must now rigorously pursue their cases in Australian trade mark opposition proceedings.  However, those efficiencies are somewhat thwarted by Trade Marks Office itself with extensive delays to dealing with any oppositions. Currently it takes 12 months for an opposition hearing to be allocated.

If you have any questions about trade mark oppositions in Australia or New Zealand then please contact Lance Scott.

For a guide on costs in Australian trade mark oppositions see Australian Trade Mark Opposition Guide - A cost benefit analysis

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[1] Bridgestone Corporation v Zylux Distribution Pty Ltd [2013] ATMO 19

[2] Xiying Susan Guo v David Bilanycz [2010] ATMO 123

[3] Trade Marks Manual of Practice and Procedure Part 15, para 4.1

[4] Trade Marks Manual of Practice and Procedure Part 15, para 4.2

[5] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42.

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