Following the barrage of changes under the “Raising of the Bar” amendments of April 2013, IP Australia have now released another public consultation paper seeking submissions on their proposals to further streamline IP processes. Whilst the proposals are more in the nature of procedural changes, if implemented, the changes would likely result in significant changes to trade mark practice in Australia. We discuss two of the more major changes proposed below. See 20 February 2015 Consultation Paper.
Another bite of the cherry – a new way to object
Currently, there are a number of mechanisms by which interested third parties can obstruct trade mark ownership:
- opposition to an accepted trade mark (section 52 of the Trade Marks Act 1995 (“Act”)); and
- applying to the Court to rectify the Trade Marks Register by cancelling the registration of the trade mark (under section 88 of the Act); or
- indirectly, by suggesting to IP Australia that it should revoke the acceptance of a trade mark (section 38) or its registration (section 84A), although it is up to IP Australia whether it chooses to proceed with revocation or not.
IP Australia has suggested the introduction of a new re-examination procedure, broadly similar to the procedure currently available for patents. In particular, it is proposed that:
- re-examination of an accepted or registered mark can take place any time between first examination until 12 months after registration, upon request by a third party. In respect of a registered trade mark, the Registrar must re-examine the mark upon request by a third party and payment of the relevant fee. In respect of an accepted mark, the Registrar has a discretion to re-examine upon request of a third party (with no fees payable). It is proposed that the discretion may not be exercised if there is an opposition or court action afoot;
- re-examination is on the same grounds as in examination (meaning that some additional grounds available in opposition – such as true ownership and a third party’s earlier use – would not be available in re-examination); and
- the requestor can participate in the re-examination proceedings, namely they would be provided with the re-examination report and each party would have one opportunity to respond.
The proposed changes, if implemented, would provide another cost-effective arrow in the quiver for people interested in objecting to the acceptance or registration of new trade marks. In theory, this is likely to result in a more robust Trade Marks Register by providing another way for rights to be “tested”.
However, before implementation, there will need to be serious clarification about how the re-examination process would interact with other processes. Firstly, it is questionable the benefit of re-examination procedures in the context of accepted trade marks where opposition procedures already allow for the trade mark to be opposed on the basis of the same matters canvassed by examination (and more) (and for the opposition to be appealed if required). In addition, it is not uncommon for the Trade Marks Office to revoke acceptance or registration of a trade mark either on its own initiative or after being “tipped off” by a third party about issues which may possibly not have been properly dealt with in examination. It is yet to be determined how re-examination would fit between concurrent processes for opposition and revocation in respect of the same trade mark, if at all.
We recommend that overseas trade mark attorneys watch this space closely because if implemented, your clients may be able to take advantage of re-examination procedures which can be requested prior to acceptance of a trade mark. This will make the Australian jurisdiction unique to some extent and you would need to advise your clients to watch the progression of competitors’ trade mark applications closely, even well before they are accepted.
Time to get your act together!
Many trade mark applicants and opponents have already felt the burn of IP Australia’s whip following the Raising the Bar changes to extension of time provisions, which has made it significantly more difficult to obtain extensions of time for the filing of evidence in opposition proceedings.
Yet more changes are proposed which will affect timing of a trade mark application and procedures for extensions of time:
- firstly, the timeframe for acceptance is proposed to be reduced from 15 months to 6 months, together with the abolition of the general extensions currently available under Regulation 4.12(3) (i.e. the 6 months of ‘easy’ extensions currently available). This dramatic change is proposed to be countered by the introduction of new grounds for deferment, for example where evidence is being gathered to overcome a ground for rejection based on distinctiveness issues; and
- major changes are slated in respect of the administration of extension of time provisions including (among other things):
- amending legislation to particularise examples of situations to be included as justifying an extension under “special circumstances”;
- introducing an additional ground for extension on a “despite due care” standard (similar to what currently exists for patents and designs);
- making all extensions of time non-discretionary (as long as set criteria in legislation are satisfied); and
- most controversially, streamlining the process for extensions of time, by automatically granting extension requests without assessment, and relying solely on objections by third parties within a certain period of time. IP Australia would only assess the extensions of time request if objected to.
We recommend that regular trade mark filers and overseas trade mark attorneys keep an eye on these changes as they are likely to affect prosecution procedure to a high degree.
In addition, if IP Australia ceases substantive assessments of extension requests, interested parties will need to monitor competitors’ trade mark applications during the entire prosecution lifecycle rather than just for the acceptance of the trade mark to ensure that they object to invalid extension requests if applicable. The will arguably result in greater uncertainty for trade mark holders if a trade mark can be revoked after registration (until 12 months after registration) on the basis that a trade mark should never have been registered because the holder was not entitled to an extension of time (but was granted unchallenged). This is especially the case since the boundaries of the recently introduced extension of time provisions (under the “Raising the Bar” amendments) are still being tested in early case law. It has not yet been discussed whether the opposition grounds will be expanded to include an opportunity to challenge extensions of time granted during the prosecution of a trade mark application.
As noted above, the changes proposed by IP Australia will (if implemented) result in major changes for both filers and challengers of trade marks. Regular filers and overseas trade mark attorneys will need to update their strategies for the Australian market if the changes are made.
Interested parties are currently being invited to make submissions to IP Australia by 7 April 2015. See 20 February 2015 Consultation Paper.
If major changes come to fruition, Norton Rose Fulbright Australia will report major changes in further blog posts.