Trade Mark Oppositions in New Zealand and Australia - Four key differences
In our experience in conducting trade mark oppositions at IP Australia and the Intellectual Property Office of New Zealand (“IPONZ”) we have observed some key differences in practice between the two countries. This article offers some practical tips on what to expect if you or your client is involved in an opposition in either country. It is important to bear in mind that trade mark law and practice can differ considerably between Australia and New Zealand. This can impact on the timeframes which are available to complete evidence preparation, the availability of extensions of time and the standard to which evidence must be prepared.
We will address the following four aspects of opposition practice:
i) the preparation of notices of opposition;
ii) obtaining extensions of time;
iii) trade marks office expectations for the preparation of evidence; and
iv) current timeframes from completion of evidence to hearing date to receipt of a decision.
Notices of opposition
The deadline to file a notice of opposition is three months after the publication of the acceptance of the offending application in the Official Journal. The notice must include a statement of the grounds of opposition and must specify the class or classes, or the goods or services, of the opposed application to which the opposition relates. When identifying the grounds of opposition, the opponent must specify the relevant sections of the Act to which those grounds relate. If the opposition relies on an earlier filed application or registration, the number of that earlier application or registration must be specified.
Opponents are strongly discouraged from filing notices of opposition which contain grounds that are unsustainable. Assistant Commissioners are willing to penalise opponents in an award of costs where a ground of opposition is pleaded but not argued at a hearing or where there is a last-minute withdrawal of a ground, or grounds, of opposition.
A notice of opposition in Australia comprises two documents: a notice of intention to oppose and a statement of grounds and particulars.
The deadline to file a notice of intention to oppose is two months after the publication of the acceptance of the offending application in the Official Journal. The statement of grounds and particulars must be filed one month after the date on which the notice of intention to oppose was lodged.
The notice of intention to oppose and the statement of grounds and particulars must be in “an approved form”. Approved forms can be found on IP Australia’s website: https://www.ipaustralia.gov.au/tools-resources/pdf-forms.
In the same way that opponents in New Zealand are expected to include only grounds of opposition which are sustainable on the facts, the purpose of the statement of grounds and particulars in Australia is to enable the Registrar to assess at an early stage the adequacy of the opposition. The particulars outlined in the statement must support the grounds of opposition. If the Registrar concludes that the statement is inadequate the opponent may be directed to rectify the inadequacy by filing more information to support the grounds. The Registrar has the power to delete grounds from the opposition or to dismiss the opposition entirely if the information provided by the opponent in the statement of grounds and particulars is inadequate.
Obtaining extensions of time
The deadline to file a notice of opposition may be extended by one month as a matter of course at the request of the opponent. A further extension of time two months will be granted only if the applicant consents. The Commissioner has no ability to extend the opposition deadline if the request is received after the deadline has expired.
During the preparation of evidence phase, either party may obtain extensions of time to file evidence of up to three months if the extension “is reasonable in the circumstances”. Provided that active steps have been taken to commence the preparation of evidence, there is usually little difficulty in obtaining a three-month extension of time. Any further extensions of time will only be granted where “genuine and exceptional circumstances” exist. It is very difficult to obtain such an extension, unless an authentic, and “quite out of the ordinary”, situation has arisen which is beyond the control of the party concerned and has caused the need for an extension.
The circumstances under which extensions of time may be obtained are limited by legislation. Extending the period to file a notice of intention to oppose or the statement of grounds and particulars may only occur where there has been “an error or omission by the person, the person’s agent, the Registrar or an employee” or where there are “circumstances beyond the control of the person”.
The Registrar may only extend the period to file evidence where there are exceptional circumstances or where the person requesting the extension can demonstrate that it has made “all reasonable efforts” to meet the deadline and it has acted “promptly and diligently at all times” in its efforts to file evidence prior to the deadline. Decisions of the Registrar have examined what it means to act promptly and diligently at all times. The decisions often engage in a forensic analysis of the actions of key individuals during the time period in which the evidence ought to have been prepared. A “black hole” in the timeline during which there is no apparent action being taken to prepare the evidence can be fatal to an extension request, because the regulations provide that a party must be prompt and diligent “at all times”.
It is prudent for parties to assume that no extensions of time are available when preparing evidence in Australia.
Preparation of evidence
Usually, evidence is presented in the form of a statutory declaration or an affidavit. In rare occasions, evidence may be given orally, under oath. Cross examination of a witness is possible, but again, rare.
Although the High Court rules technically do not govern proceedings at the Trade Marks Office, Assistant Commissioners expect that evidence will be prepared to this standard. In particular, this means that statutory declarations or affidavits must be correctly witnessed and that exhibits must be properly attached together with exhibit notes signed and dated by the witness. Parties should bear in mind that proceedings at the Trade Marks Office may be appealed to the High Court. In New Zealand, appeals are based on the documents filed before the Trade Marks Office. Hence, the quality and admissibility of evidence prepared for the Trade Marks Office may need to withstand scrutiny of the High Court (or beyond).
Statutory declarations or affidavits prepared for New Zealand proceedings should not contain hearsay, non-expert opinion evidence, submissions or irrelevant evidence.
Any lawyer or attorney who submits his/her own evidence, particularly if it is of a contentious nature, will be precluded from acting in the proceedings or appearing at the hearing.
We have observed recently that an increasing number of parties to proceedings are withholding evidence from the other party on the basis that it is confidential. This has led to delays of several months whilst the parties discuss the extent to which the evidence may be disclosed, and to whom. IPONZ has established a helpful policy on dealing with the confidential evidence, which can be found here: https://www.iponz.govt.nz/about-ip/trade-marks/hearings/current-hearings/evidence/#jumpto-12__002e-confidential-evidence11.
Evidence in the Australian proceedings may be filed in the form of statutory declaration or affidavit, but more commonly it is presented in the form of a simple declaration, an approved form of which can be found here: https://www.ipaustralia.gov.au/sites/g/files/net856/f/dec00001-declaration_0.pdf.
The declaration does not need to be witnessed, notarised or legalised.
Regulation 21.15(4) of the Trade Marks Regulations 1995 states that: “The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate”.
Recently, IP Australia has stipulated that where evidence comprises more than 50 pages in total, the party submitting the evidence must clearly paginate and bookmark the document in a way that sufficiently identifies the evidence upon which the party is relying. Further, “a summary of the evidence, referring back to the grounds set out in the filed Statement of Grounds and Particulars and the relevant page number within the documents filed, must be provided with the party’s written summary of submissions to be relied on at the hearing”.
Unlike appeals to New Zealand’s High Court, an appeal of a trade mark opposition in Australia to the Federal Court is conducted de novo. Deficiencies in evidence may be rectified.
If an opposition were to proceed in New Zealand with each party taking the maximum allowable time to complete each stage, and without either party obtaining any extensions of time, the minimum period of time before the opposition is ready for a hearing is seven months. More commonly, it takes over 12 months before the matter is ready to be set down for a hearing.
Currently, IPONZ is scheduling hearings for dates which are approximately nine months after the matter is ready for a hearing.
Assistant Commissioners aim to issue a decision 30 working days from the hearing date.
If an opposition were to proceed in Australia with each party taking the maximum allowable time to complete each stage, and without either party obtaining any extensions of time, the minimum period of time before the opposition is ready for a hearing is 10 months.
Currently, IP Australia is scheduling hearings for dates which are approximately six months after the matter is ready for a hearing.
The Registrar aims to issue a decision 87 days from the hearing date.
David Moore - February 2018