Archive for January, 2010|Monthly archive page

IP Australia – “Towards a stronger and more efficient IP rights system – resolving trade mark opposition proceedings faster” – proposals for changes to opposition procedure without any consideration of harmonization with New Zealand

In Uncategorized on January 28, 2010 at 2:24 pm

In an earlier post, I commented that notwithstanding the drive towards harmonization between the Intellectual Property Offices in New Zealand and Australia, in some regards IPAustralia is forging ahead with changes to practice without consideration how this sits with the practice in New Zealand.

In this regard, IPAustralia issued a consultation paper in June 2009 setting out its “proposals directed at improving the fit and function of the Australian IP system”. Interested parties had until 17 August 2009 to make submissions.

A second consultation paper issued in November 2009 to “seek views on the detail of the revised proposals” and “summarise the key issues raised during consultation”. Drafting instructions for the Intellectual Property Laws Amendment Bill also issued. The deadline for submissions on the detailed revised proposals is 12 February 2010.

There are a number of papers, most of which deal with patent prosecution and opposition practice and divisional applications and one dealing with trade mark opposition procedures.

The following summary relates to the proposed changes relating to trade marks opposition procedure.

Changes proposed by IPAustralia to increase the flexibility of trade marks legislation for opposition proceedings
– reduce the period to file Notice of Opposition from three months to two months;
– the Registrar, rather than the opponent, is to serve copy of the Notice of Opposition on the applicant as soon as practical;
– remove “negotiations” or “research” as valid grounds for an extension to file the Notice of Opposition;
– provide for granting of extension to file Notice of Opposition if required “despite the person concerned having taken due care as required in the circumstances”;
– opponent required to serve on applicant, and file, a statement of grounds of the opposition and particulars (SGP) relating to each ground within 1 month of filing Notice of Opposition. The Notice of Opposition and SGP can be combined within same document;
– opponent can request amendment of the Notice of Opposition – to correct clerical error or obvious mistake or change name of opponent; and to amend SGP to correct error or omission in grounds, amend the particulars, and to add any ground of opposition (if the Registrar is satisfied that amendment is necessary as result of new information which opponent could not reasonably have been aware of when filed SGP);
– the Registrar may dismiss the opposition, and register the application, if the opponent does not serve and file SGP or particularise grounds of opposition in the statement.
– The applicant is to file a notice indicating its intention to defend the application within 1 month after the opponent served the SGP. IPAustralia may require a fee for this document.
– the period of time for opponent to file evidence in reply, or notice that not filing evidence in reply, reduced from 3 months to 2 months;
– further evidence provisions are to be repealed. However, parties would be able to provide information to Registrar under existing Reg 21.19;
– the Registrar may give directions to extend a period to file evidence only if s/he is satisfied that the party has acted promptly and diligently at all times since the opposition proceedings began but despite that cannot serve the evidence in that period or because of some other compelling circumstance. It is to be noted that the Registrar must not give an extension solely because of delays caused by agent or legal representative to act promptly or diligently. However, it is not stated how many extensions may be allowed;
– the Registrar may suspend opposition for period of 6 months, and a second period of 6 months, if the Notice of Opposition filed and all parties to the opposition file request of suspension. However, the Registrar must not suspend the opposition for more than 12 months. The Registrar must terminate the suspension if requested by any party to the opposition and the proceedings will recommence;
– the opponent is to file and serve summary of hearing submissions no later than 10 business days before the hearing and the applicant is to file and serve summary of submissions no later than 5 business days before the hearing. The Registrar may take failure to file or serve summary of submissions into account in considering any award of costs;
– provide a broad power for the regulations so that the regulations may provide for and in relation to opposition proceedings – IPAustralia seek a power similar to section 228(2)(b) of the Patents Act. The specifics of the regulations set out in Annex III to Drafting Instructions (see pages 45-50). This matter was not covered in the initial consultation paper.

Key differences with New Zealand practice:

The initial opposition period is three months which is extendible by one month as a matter of course, and two months only if the applicant consents. Thus, the period to commence opposition proceedings in Australia will be significantly shorter than in New Zealand.

In New Zealand there are no limitations of the grounds on which a party may rely for an extension for filing any document or evidence. In particular, the conduct of negotiations and the undertaking of research would be considered to be valid grounds. After an initial short extension, the Commissioner requires the other party’s consent to the extension and as long as that consent is forthcoming the extension will be allowed (except for filing the Notice of Opposition as the Trade Marks Regulations 2003 sets a maximum of two months of extensions). Thus, in New Zealand there are broader grounds for an extension.

The Notice of Opposition should fully set out the grounds and basis for the opposition. It would appear that the intended Notice of Opposition and SGP suggested by IPAustralia will be similar in content to the Notice of Opposition that an opponent would file in New Zealand.

An opponent in New Zealand is able to correct an obvious clerical error in the Notice of Opposition but cannot add grounds of opposition at any time subsequent to the filing to the Notice of Opposition.

A New Zealand applicant indicates its intention to defend the opposition by filing a Counter-statement within two months of the filing of the Notice of Opposition. The Counter-statement sets out grounds in support of the registration of the application and the applicant’s responses to the grounds of opposition. No fee is payable. That the applicant in Australia must now file a notice of its intention to defend the application brings the proceedings more in line with those in New Zealand.

The opponent has an initial period of one month in which to file evidence in reply with IPONZ allowing short extensions of time of this deadline.

Either party may file further evidence, provided there are “genuine and exceptional circumstances that justify filing the evidence” or “the evidence could not have been filed earlier”. The parties are entitled to be heard on this issue before the evidence is admitted. If the late evidence is admitted, the other party would have a right of reply.

At any time after opposition proceedings are commenced, which merely requires the filing of an extension of time request by the opponent, the parties can apply for a halt of proceedings. The Commissioner will allow successive periods of halt of six months each, provided other party consents. There is no specified maximum period that the Commissioner can allow.

Whilst the Commissioner has stated a desire that an advance copy of the submissions is served on the other party before the hearing, there is no penalty if this is not done. Indeed, while the parties routinely provide an advance copy of their submissions to the Commissioner it is very uncommon for the opposing counsel to be served with a copy of the submissions in advance of the hearing.


Whilst there are different time frames allowed for each step in the process in each jurisdiction, it appears that the average opposition would take 12 months, not allowing for extensions, in both countries.

In this review process, IPAustralia does not appear to have considered the practice in New Zealand with the object of harmonization in mind.


Harmonisation – but to what extent?

In Uncategorized on January 7, 2010 at 10:37 am

In some respects, trade mark practice in New Zealand and Australia is developing without regard to the issue of harmonisation (more on this at a later date) however, notwithstanding differences in law, practice, policy and outcomes to date, the New Zealand and Australian governments are set on a path of harmonisation of examination outcomes for the same trade marks in New Zealand and Australia.

The impetus for these changes spring from a joint statement by Prime Minsters Rudd (Australia) and Key (New Zealand) in August 2009. In particular, it is intended that persons in Australia or New Zealand should not have to engage in the same process or provide the same information twice and that measures should deliver substantively the same regulatory outcomes in both countries in the most efficient manner. In relation to Intellectual Property – this opens up the possibility of not just harmonisation of examination outcomes but also a joint Register in the future. The joint statement notes that the options “need not necessarily involve harmonisation of law or the creation of joint institutions but may take other pragmatic approaches”. However, it would appear that IPAustralia is already considering the possibility of a future single trade mark register and a single plant variety right / plant breeder right application process and the PSB is already considering the possibility of a single registration process for, and regulation of, patent and trade mark attorneys in Australia and New Zealand.

The Prime Ministers’ full joint statement and the respective office’s December announcements from IPONZ and from IPAustralia as to the implementation of the this stage of the harmonisation project have been published. It will be interesting to see the outcomes for this project in due course.

Happy new decade!

In Uncategorized on January 7, 2010 at 10:28 am

I must admit that I am not a fan of “new years resolutions” however, I will endeavour to post more frequently than I did in 2009 😉

– as the sun sets on 2009 … sunset on 31 Dec 2009 as viewed from Waikanae Beach, Kapiti Coast, New Zealand (c) Elena 2009