Australia takes strict approach in trade mark oppositions
Just over a year ago, Australia introduced controversial new procedures for opposition proceedings. The new procedures are aimed at streamlining the opposition process and reducing delays in the
Just over a year ago, Australia introduced controversial new procedures for opposition proceedings. The new procedures are aimed at streamlining the opposition process and reducing delays in the resolution trade mark oppositions by shortening time limits, introducing stringent extension of time provisions, and requiring opponents to particularise the grounds at an early stage. Last month, the Australian Trade Marks Office issued its first decision regarding extensions of time under the new provisions, indicating that it will be challenging to obtain extensions of time in the evidence stage of proceedings.
In MG Icon LLC v Caprice Australia Pty Ltd) [2014] ATMO 34 the Hearing Officer rejected the request to extend the two month period for filing evidence. In particular, the Hearing Officer decided that the following did not constitute "exceptional circumstances" under the new regulations:
The Hearing Officer also criticised the steps taken as she did not consider that the Opponent made all reasonable efforts to meet the initial deadline. Problems with email, while contributing to the delay, cannot be used to excuse it. Parties are expected to take action expeditiously once receiving notification of a deadline and should take diligent steps to ensure that the evidence is filed in a timely manner.
The decision confirms that it will now be very difficult to obtain extensions of time in Australian opposition proceedings. This is a major deviation from both previous Australian practice and the practice in many other jurisdictions, where deadlines are longer and/or it is relatively easy to obtain at least one extension of time. The current time limits in Australia are three months (Evidence in Support and Evidence in Answer) and two months (Evidence in Reply). If the deadline is missed and an extension is refused, there is a real possibility that the evidence will not be taken into account in the proceedings. We therefore recommend that Australian trade mark owners involved in oppositions take extra care to submit evidence in a timely manner.
In MG Icon LLC v Caprice Australia Pty Ltd) [2014] ATMO 34 the Hearing Officer rejected the request to extend the two month period for filing evidence. In particular, the Hearing Officer decided that the following did not constitute "exceptional circumstances" under the new regulations:
- The fact that the new provisions came into effect during the proceedings; and
- The transfer of ownership of the trade mark in question during proceedings.
The Hearing Officer also criticised the steps taken as she did not consider that the Opponent made all reasonable efforts to meet the initial deadline. Problems with email, while contributing to the delay, cannot be used to excuse it. Parties are expected to take action expeditiously once receiving notification of a deadline and should take diligent steps to ensure that the evidence is filed in a timely manner.
The decision confirms that it will now be very difficult to obtain extensions of time in Australian opposition proceedings. This is a major deviation from both previous Australian practice and the practice in many other jurisdictions, where deadlines are longer and/or it is relatively easy to obtain at least one extension of time. The current time limits in Australia are three months (Evidence in Support and Evidence in Answer) and two months (Evidence in Reply). If the deadline is missed and an extension is refused, there is a real possibility that the evidence will not be taken into account in the proceedings. We therefore recommend that Australian trade mark owners involved in oppositions take extra care to submit evidence in a timely manner.