Important news for trade mark owners (and their lawyers)

On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act commenced, resulting in a number of changes to patent, design and trade mark law.

These changes aim to improve many of the practices and procedures involved in intellectual property protection, and in particular will introduce substantive changes to the trade mark opposition process.

The trade mark opposition process is in place to allow trade mark owners to oppose actions such as the registration of another trade mark application, or an application to have a trade mark removed from the Register for non-use.

Trade mark owners should be aware of the following changes to ensure their own processes in relation to this are updated accordingly.

Reduced opposition period

The trade mark opposition period will be reduced from three months to two months. This means that trade mark owners have a reduced period of time to oppose an accepted application from being registered.

This change will apply to any trade mark that is advertised as accepted on or after 15 April 2013, or any applications for removal of a trade mark advertised on or after 15 April 2013.

New forms to be completed

If a trade mark owner wishes to oppose an application within the two month period, they will be required to file an initial ‘Notice of Intention to Oppose’ and then a ‘Statement of Grounds and Particulars’ up to a month later, setting out the legal grounds on which they intend to rely.

In addition, a trade mark applicant wishing to defend an opposition to their application will now need to file a ‘Notice of Intention to Defend’ within one month of a Statement of Grounds and Particulars being filed by the trade mark owner.

Reduced time frame for evidence in reply

The opposition process allows for filing of evidence in support of an opposition, evidence in answer to the opposition and then evidence in reply. While the time period for evidence in support and answer remains at three months, the time period for evidence in reply will now be reduced to two months.

Trade mark owners and applicants seeking an extension of any evidence deadlines should also be aware that the new legislation significantly reduces the scope for such extensions.

What these changes mean for trade mark owners and applicants

These changes have been implemented to reduce delays in resolving oppositions, however they also require trade mark owners and applicants to ensure their processes allow for sufficient time to meet the new deadlines.

For trade mark owners, this will affect monitoring of accepted trade marks, making it vital to act quickly if a potentially conflicting trade mark application is discovered.

If you would like further information or advice in relation to the new trade mark opposition process, or if you have any concerns about your intellectual property protection, please contact Certus Legal Group.