Summary of the key issues with the draft Trade Mark Regulations for the Raising the Bar Act
The Intellectual Property Laws Amendment "Raising the Bar" Act 2011 ("the Amendment Act") received Royal Assent on 15 April 2012, and the provisions dealing with trade marks will come into effect on 15 April 2013. The Amending Act introduces significant changes to Australian opposition case management and these changes were summarised in previous articles. However much of the detail of the new regime was to be set out in the Trade Mark Regulations, a draft of which was published on 11 October 2012. The deadline for comment on the draft Regulations expired on 21 November 2012.
Unfortunately, the Regulations have not provided all the detail which practitioners were expecting. Moreover, there appear to be some errors and some unintended consequences arising from the draft Regulations. It is envisaged that IP Australia will publish the final form of the recommendations in March 2013. In the meantime, we summarise some key issues below:
The key issues with the draft Trade Mark Regulations
"Giving of Documents" by the Registrar
The various deadlines in opposition proceedings are to be determined from the date on which a document is "given" to a party. A document is taken to have been given on the day on which the document is dated by the Registrar and when the Registrar:
makes the document available to the person in electronic form; and
notifies the person that the document is available.
However, there is no explanation as to how the document is "given" if a party does not have email or access to the internet.
The requirement for parties to serve documents and evidence on the other party is removed. The burden for notifying the other party that documents and evidence have been filed is now placed on the Registrar. In addition, the Registrar may issue a direction concerning how many copies of a document or evidence must be filed and the form of that material.
Notice of Opposition
Rather than filing a Notice of Opposition (NoO), an opponent is now only required to file a Notice of Intention to Oppose ("NIO") in "approved form". To date, no approved form has been provided and it is therefore unclear what level of detail will be required. The timeframe for lodgement of a NIO is 2 months from the date of advertisement of acceptance.
Statement of Grounds and Particulars
Within 1 month of filing the NIO, the opponent will be required to file a Statement of Grounds and Particulars (SGP) which sets out the grounds of opposition and the material facts which particularise each of those grounds. If the SGP is not filed then the opposition is dismissed. If the Registrar decides that the SGP is inadequate, she may direct that the opponent rectify the inadequacy by filing more information or dismiss the opposition. There is considerable uncertainty concerning how detailed an SGP must be and whether an applicant has any ability to object to and/or query the adequacy of the SGP. Furthermore, there does not appear to be any provision for a time limit for the Registrar's deliberations in these matters.
Extension for Filing Notice of Intention to Oppose or Statement of Grounds and Particulars
An extension of time may be granted only on the basis of:
an error or omission; and/or
circumstances beyond the control of the person.
The Registrar is provided with discretion to decide the length of the extended period having regard to what is "reasonable in the circumstances". An example is provided in the Regulations, that the Registrar may extend the deadline for a week if it transpired that an applicant could not attend to a deadline because he/she was sick for a week.
A NoO is not considered filed until both the NIO and the SGP have been filed.
Notice of Intention to Defend
An applicant must file a Notice of Intention to Defend (NID) within 1 month from the day on which the applicant is "given" a copy of the SGP. Once again no approved form or guidance has been provided as to how much detail will be required. Most importantly, the Regulations do not provide for an official fee. Regrettably, it therefore seems likely that this stage of the opposition will not have the desired effect of weeding out speculative or bad faith applications and this action seems destined to simply become a procedural "tick-a-box" step in the process.
Amendment to Statement Grounds and Particulars
It is proposed that an amendment to the SGP may only be made to amend or add a new ground of opposition "if the Registrar is satisfied that the amendment or addition relates to information which the opponent could not reasonably have been aware of at the time of filing the statement". This test will be difficult to apply in practice and it is likely to become fertile ground for dispute. It is not apparent why the Registrar would not allow the general amendment provision in Section 66 to apply in this context. Under Section 66 a document may be amended if it is "fair and reasonable in all the circumstances of the case to do so". This would have reflected a sensible and pragmatic approach to any amendments that may be required.
Extensions for Filing Evidence
Parties will have a period of 3 months to file evidence in support and evidence in answer and 2 months to file evidence in reply. The Registrar may extend these periods only if the Registrar is satisfied that the party:
Has made all reasonable efforts to comply with the relevant filing requirements; and
Despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or
There are exceptional circumstances that justify the extension.
This is a very onerous test and one which the Registrar may have difficulty adjudicating on. Moreover, the examples of what may constitute "exceptional circumstances" in Regulation 5.16(4) are very restrictive and not helpful in understanding how this provision will operate.
The further evidence provisions have been repealed and the explanatory memorandum explains that the Registrar may consider any information in an opposition under the broad power in current Regulation 21.19 which allows the Registrar to inform herself of any information available to the Registrar. This is a worrying development as it may lead to the submission of material which is not in declaratory form and at any stage of the proceedings without the current requirement that there be good explanation why the evidence was not filed earlier.
Cooling Off Periods
Cooling off may only be requested once the NoO has been filed (therefore after the NIO and the SGP have been filed). However, the parties can only request a single cooling off period of 6 months and only 1 extension of a like term. Moreover, cooling off may only be requested once. It is not clear why these provisions are so restrictive and clearly, in some cases involving multi-jurisdictional disputes, a period of 12 months will be inadequate.
In the interests of all substantive opposition proceedings before the Registrar being conducted in a similar manner, the above provisions concerning NIO, SGP and NID will apply to non-use proceedings. In many respects this is unfortunate as the current proceedings are much more streamlined, easier to understand, and inexpensive. There also appears to be an error in draft Regulation 9.15(5) which requires an applicant for removal to file evidence in answer even if the registered owner has not filed any evidence in support of its opposition to the removal application. The position should be that if no evidence in support is filed then the non-use action is successful.
The Registrar will now have the discretion to direct whether to hear a matter orally or decide the matter based on written submissions alone. Presently the parties have a right to a Hearing if they agree to pay the Hearing fee. It seems that the parties may be prejudiced by a potential inability to present their case at an in person hearing and moreover, there is no indication of the factors which the Registrar will take into account in exercising this discretion.
For any cases which are accepted and opposed prior to 15 April 2013, the existing Regulations will apply. However, any extensions of time will be subject to the tougher rules in the draft Regulations and the Registrar will adhere to the "file – and – give" regime for documents filed after 15 April 2013.
If an application is accepted prior to 15 April 2013 but opposed after this date then the opposition period will be 3 months but thereafter, the new Regulations will apply.
In circumstances where an opposition has commenced prior to 15 April 2013 and a deadline for filing evidence began prior to this date, then the current Regulations will apply for the first extension of time sought by a party after 15 April 2013. Thereafter, the new Regulations will apply.
Concluding observations of the draft Trade Mark Regulations for the Raising the Bar Act
It is difficult to assess the full impact of the draft Regulations until the approved forms are provided and we have more information concerning the level of detail required for an SGP and the circumstances in which the Registrar will allow amendments and extensions. Greater guidance should be provided early next year. In the meantime, it is interesting to note that the stated objectives of the Amending Act were to:
Resolve opposition proceedings faster;
Have a trade mark opposition process which was as simple and straight forward as possible; and
To make opposition proceedings inexpensive.
No doubt, opposition proceedings under the new regime will be resolved quicker. However, the revised procedures will be less simple and less straight forward than the current regime. Moreover, owing to the number of additional steps in the process, it is likely that opposition proceedings will be more expensive under the new regime, particularly for opponents. It is also likely that the bulk of the costs will be incurred earlier in the proceedings.
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