WATCHING OUT FOR YOUR TRADE MARKS IS ABOUT TO BECOME EVEN MORE
IMPORTANT
By: Scott La Rocca, Solicitor
5 April 2013
It has always been important to defend and protect your brands and trade marks from
third parties encroaching into your space. Now, with amendments to the Australian
Trade Marks Act 1995 and Trade Mark Regulations 1995 effective from 15 April 2013,
registered trade mark owners will need to enforce their rights more promptly as part of a
tightening up of trade mark registration opposition proceedings.
When a trade mark application is accepted by the Trade Marks Office, it is published in
an official journal and online, and others are given an opportunity to oppose the
application based on certain grounds set out in the Act. In other words, you can oppose
a competitor’s trade mark application in certain circumstances to protect your mark. Both
parties are then given an opportunity to submit evidence before a decision is made as to
whether or not the trade mark should be registered.
So what’s changing?
Previously, the window to commence opposition proceedings was within three months of
the date a trade mark application was advertised in the official journal. Now, for
applications advertised on or after 15 April 2013, the opposition period will be reduced
to only two months. The technical side of trade mark opposition proceedings is also
changing to speed up the whole process. For instance:
⎯ Opponents will need to be more precise in specifying the exact grounds for the
opposition, whereas before these could be much more vague;
⎯ Trade mark applicants who receive notice that their application has been opposed
will need to file a “Notice of Intention to Defend” within one month, otherwise their
application will lapse;
⎯ Once the opposition is underway, each party will have three months to file evidence
and it will now be much harder to obtain extensions to these deadlines;
⎯ All evidence will need to be submitted electronically, unless specifically directed by
the Trade Marks Office.
These changes are designed to speed up the opposition process, which previously would
often take several years.
How does this impact you?
Simply, it means that trade mark owners will need to be more vigilant, more prompt and
more attentive in enforcing their rights. In particular:
2
Ø Trade mark owners will need to be aware of pending applications for competing
trade marks and be prepared to oppose other trade marks more quickly and more
decisively;
Ø Both sides in trade mark oppositions will need to be ready to file evidence promptly
in accordance with the new requirements. There will not be much leeway for a
haphazard approach to oppositions!
While these changes will no doubt expedite opposition proceedings and lighten the load
at the Trade Marks Office, there are potentially detrimental outcomes for time-poor trade
mark owners. One way to counter the impact of the new changes is to engage a trade
mark watching service to check for conflicting trade mark applications on a regular
basis, so that trade mark owners can be kept in the loop and make timely, educated
decisions on whether to oppose applications within the limited timeframes provided under
the amended laws. If you think a watching service may be appropriate for you or your
clients, Anisimoff Legal offers such a service and we can discuss an appropriate strategy
to meet your needs on request.
Tougher enforcement for trade mark infringement
The changes to trade marks law also introduce tougher penalties, including the ability to
claim aggravated damages in trade mark infringement matters, and new powers to
inspect goods seized by Customs for bearing infringing trade marks. Trade mark owners
who wish to have goods imported into Australia checked for infringements will need to
apply to Customs and be prepared to commence legal proceedings promptly when
infringements are detected.
Please feel free to contact any of our trade mark specialists listed below for further
information on any of the above.
Scott La Rocca
+61 3 9907 4303
Emma Tiberi
+61 3 9907 4304
Shannon Ismay
+61 2 8935 8804
[email protected]
[email protected]
[email protected]