51.1. Evidence

Parties are required, except where exceptional circumstances are shown to apply, to file and be given evidence in opposition proceedings electronically via Objective Connect.

Objective Connect is an electronic data management tool which allows evidence to be securely shared between parties in an opposition proceeding. Objective Connect may only be used for evidence in opposition proceedings. Parties filing evidence documents must include a covering letter indicating whether the evidence constitutes part or all of the evidence filed and identifying the declarations that are included. Any other documents submitted via Objective Connect may be deemed not filed.

More information in relation to Objective Connect, including a user guide is available on IP Australia’s website.  Evidence must be in the form of a declaration Sections 8-9 of the Trade Marks (Means and Form of Filing Documents and Evidence) (Opposition and Other Proceedings) Instrument 2019 set out the requirements for a declaration.  

If more than 50 pages in total are submitted by a party as evidence in proceedings for opposition matters, including all declarations and exhibits, each document submitted must be clearly paginated and bookmarked in a way that sufficiently identifies the evidence that the party is relying on. If more than 50 pages of evidence are submitted by a party, 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.

As a general principle, information that is not included in a declaration is not regarded as evidence and the other party is entitled to argue that it should not be taken into account when the opposition is decided.  However reg 17A.69 provides that copies of certain international instruments are admissible as evidence in proceedings relating to a trademark that is the subject of an international registration designating Australia (IRDA) or is a protected international trade mark. Furthermore reg 21.15(4) provides that '[t]he 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.'

Evidence should be filed with IP Australia within the period allowed for the filing of that evidence. If the evidence is filed late the party who filed the evidence should apply for that period to be extended (regs 5.15, 9.18, 17A.34K, 17A.48T).

If it does not apply for an extension, the evidence may not be taken into account when the opposition is decided.  See Part 51.2.2.6.

1.1  Evidence in support

The onus is on the opponent to establish its case in any opposition action.  Accordingly the opponent is the first party in the Regulations to be given an opportunity to prepare evidence in support of its opposition.

Evidence in support must be filed with IP Australia within 3 months from the day the opponent is given a copy of the notice of intention to defend (regs 5.14, 9.16, 17A.34J, 17A.48R).  

If the opponent does not intend to rely on evidence in support they should notify IP Australia in writing

1.2  Evidence in answer

Once the opponent has filed all of the evidence in support, the Regulations give the applicant an opportunity to prepare evidence in answer. By definition the evidence in answer may deal with issues in the opponent’s evidence and in the opposition generally.

Evidence in answer must be filed with IP Australia within 3 months from the day the Registrar gives the applicant all of the evidence in support and notifies the applicant that all evidence in support has been filed (regs 5.14(4), 9.16(4), 17A.34J(4), 17A.48R(4).

If the opponent does not file any evidence in support, the applicant must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the Registrar notifies the applicant that no evidence in support was filed (regs 5.14(5), 17A.34J(5)).

The previous paragraph does not apply if the opposition is in relation to removal/cessation of protection of a trade mark.  The opponent’s failure to file any evidence in support or to request a hearing means opposition proceedings are taken to have ended (regs 9.17(2), 17A.48S(2)). The Registrar must then remove the trade mark or cease its protection, in respect of the goods and/or services specified in the non-use application (section 97).

If the applicant does not intend to rely on evidence in answer they should notify IP Australia in writing.

1.3  Evidence in reply

In the last phase of the evidence process the opponent has an opportunity to file evidence in reply to the evidence in answer. By definition such evidence must be limited to issues raised in the evidence in answer.

Evidence in reply must be filed with IP Australia within 2 months from the day the Registrar gives the opponent all the evidence in answer and notifies the opponent that all evidence in answer has been filed (regs 5.14(6), 9.16(6), 17A.34J(6), 17A.48R(6))

If the opponent does not intend to rely on evidence in reply they should notify IP Australia in writing.

1.4 Confidentiality of information in evidence

When a valid notice of intention to defend is filed, notices are sent to both parties about the conduct of opposition proceedings. The Registrar is aware that the parties may be in direct competition in the marketplace and for this reason those notices contain a direction that information filed on a party and properly identified as confidential is restricted to those persons who reasonably need to see it for the purposes of the opposition.  Such information must be treated as confidential and may be used by the receiving party only in relation to the conduct of, or the giving of advice in relation to, the opposition. If a party uses information in any manner other than for the conduct of that opposition it is vulnerable to legal action for breach of confidence.  

It may be that one of the parties would like the additional certainty of a signed confidentiality agreement. In that case it should ensure the terms of the agreement are reasonable.  If evidence has been filed ‘conditionally’ and the other party does not agree to the ‘conditions’, the evidence will not be considered when the opposition is decided.  The Registrar is not permitted to take information into account if one of the parties has not been able to view it and make representations about it (reg 21.19). Nor will information in evidence be taken into account if the party providing the evidence has deleted or blacked out that information.

If a third party requests access to documents in a trade mark opposition under the provisions of the Freedom of Information (FOI) Act the owner of the documents will be informed and given the opportunity to make submissions about their release.