Colin Biggers & Paisley in Sydney have prepared the below briefing paper about some important changes to Australian trade mark opposition procedure and practice that commence on 15 April 2013.  

Some key practical implications for clients of ADVOC member firms:

  • Care will need to be taken to file oppositions to Australian trade mark applications within a reduced 2 month opposition period.
  • The frequency of any periodic watch services of Australian trade mark filings may need to be adjusted accordingly.
  • The changes will bring forward decisions about identifying relevant grounds of opposition and consideration of relevant supporting evidence.
  • Those decisions and a survey of available evidence will need to be made around the time of filing a notice of intention to oppose.
  • There are sharply curtailed rights to seek extensions of time to extend the opposition period and to file evidence in support, in answer and in reply.  
  • There is also a narrower and more limited cooling off right.
  • This is only available after filing of a statement of grounds and particulars and is limited to a total 12 months.
  • This will need to be taken into account in the context of the timing and tempo of any commercial negotiations / co-existence discussions that Advoc member clients enter into with Australian applicants.
  • It would be in the interest of clients of Advoc member firms to file any possible oppositions to Australian trade mark filings prior to 15 April 2013 to take advantage of the presently more flexible rules.
  • Separately, there might be a tactical advantage in delaying filing borderline distinctive marks in Australia until after 15 April 2013 given a favourable change in the presumption about what will be accepted for registration as an Australian trade mark.