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- Part 1 Introduction, Quality
- 1. Introduction
- 2. Quality Management at IP Australia
- 3. Monitoring and Measuring Quality at IP Australia
- 4. Examination Quality Standards
- 5. Practice Change Procedure
- Part 2 General Filing Requirements
- Relevant Legislation
- 1. How a document is filed
- 2. Filing of Documents - requirements as to form
- 3. Non-compliance with filing requirements
- 4. Filing Process (excluding filing of applications for registration)
- Part 3 Filing Requirements for a Trade Mark Application
- Relevant Legislation
- 1. Who may apply?
- 2. Form of the application
- 3. Information required in the application
- 4. When is an application taken to have been filed?
- 5. The reason for having minimum filing requirements
- 6. The minimum filing requirements
- 7. Consequences of non compliance with minimum filing requirements
- 8. Other filing requirements
- 9. Fees
- 10. Process procedures for non payment or underpayment of the appropriate fee
- 11. Process procedures for the filing of a trade mark application
- Part 4 Fees
- Relevant Legislation
- 1. Fees - general
- 2. Circumstances in which fees are refunded or waived
- 3. Procedures for dealing with "fee" correspondence
- 4. Underpayments
- 5. Refunds and or waivers
- 6. No fee paid
- 7. Electronic transfers
- 8. Disputed credit card payments/Dishonoured cheques
- Part 5 Data Capture and Indexing
- Part 6 Expedited Examination
- Part 7 Withdrawal of Applications, Notices and Requests
- Relevant Legislation
- 1. Withdrawal of an application, notice or request
- 2. Who can withdraw an application, notice or request?
- 3. Procedure for withdrawal of an application, notice or request
- 4. Procedure for withdrawal of an application to register a trade mark
- Part 8 Amalgamation (Linking) of Trade Marks
- Relevant Legislation
- 1. Amalgamation of applications for Registration (Transitional)
- 2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006
- Part 9 Amendments and Changes to Name and Address
- Relevant Legislation
- 1. Introduction
- 2. Amendment of an application for a registration of a trade mark - general information
- 3. Amendment before particulars of an application are published (Section 64)
- 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
- 5. Amendments to other documents
- 6. Amendments after registration
- 7. Changes of name, address and address for service
- 8. Process for amendments under subsection 63(1)
- Part 10 Details of Formality Requirements
- Relevant Legislation
- Introduction
- 1. Formality requirements - Name
- 2. Formality requirements - Identity
- 3. Representation of the Trade Mark - General
- 4. Translation/transliteration of Non-English words and non-Roman characters
- 5. Specification of goods and/or services
- 6. Address for service
- 7. Signature
- 8. Complying with formality requirements
- Annex A1 - Abbreviations of types of companies recognised as bodies corporate
- Annex A2 - Identity of the applicant
- Part 11 Convention Applications
- Relevant Legislation
- 1. Applications in Australia (convention applications) where the applicant claims a right of priority
- 2. Making a claim for priority
- 3. Examination of applications claiming convention priority
- 4. Convention documents
- 5. Cases where multiple priority dates apply
- 6. Recording the claim
- 7. Effect on registration of a claim for priority based on an earlier application
- Part 12 Divisional Applications
- Relevant Legislation
- 1. Divisional applications - general
- 2. Why file a divisional application?
- 3. Conditions for a valid divisional application filed on or after 27 March 2007
- 4. In whose name may a divisional application be filed?
- 5. Convention claims and divisional applications
- 6. Can a divisional application be based on a parent application which is itself a divisional application? What is the filing date in this situation?
- 7. Can the divisional details be deleted from a valid divisional application?
- 8. Divisional applications and late citations - additional fifteen months
- 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
- Annex A1 Divisional Checklist
- Part 13 Application to Register a Series of Trade Marks
- Relevant Legislation
- 1. Series of Trade Marks - Act
- 2. Material Particulars
- 3. Provisions of Paragraphs 51(1)(a),(b) and (c)
- 4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)
- 5. Restrict to Accord
- 6. Examples of Valid Series Trade Marks
- 7. Examples of Invalid Series Trade Marks
- 8. Divisional Applications from Series
- 9. Linking of Series Applications
- 10. Colour Endorsements
- Part 14 Classification of Goods and Services
- Relevant Legislation
- 1. The purpose of classification
- 2. The classification system
- 3. Requirement for a clear specification and for correct classification
- 4. Classification procedures in examination
- 5. Principles of classification and finding the correct class for specific items
- 6. Wording of the specification
- 7. Interpretation of specifications
- 8. International Convention Documents
- Annex A1 - History of the classification system
- Annex A2 - Principles of classification
- Annex A3 - Registered words which are not acceptable in specifications of goods and services
- Annex A4 - Searching the NICE classification
- Annex A5 - Using the Trade Marks Classification Search
- Annex A6 - Cross search classes - pre-June 2000
- Annex A7 - Cross search classes - June 2000 to December 2001
- Annex A8 - Cross search classes from 1 January 2002
- Annex A9 - Cross search classes from November 2005
- Annex A10 - Cross search classes from March 2007
- Annex A11 - Cross search classes from January 2012
- Annex A12 - Cross search classes from January 2015
- Annex A13 - List of terms too broad for classification
- Part 15 General Provision for Extensions of Time
- Relevant Legislation
- 1. When the general provision applies
- 2. When the general provision does not apply
- 3. Circumstances in which the Registrar must extend time
- 4. Grounds on which the Registrar may grant an extension of time
- 5. Form of the application
- 6. Extensions of time of more than three months
- 7. Review of the Registrar's decision
- Part 16 Time Limits for Acceptance of an Application for Registration
- Relevant Legislation
- 1. What are the time limits for acceptance of an application to register a trade mark?
- 2. Response to an examination report received within four (or less) weeks of lapsing date
- Part 17 Deferment of Acceptance
- Relevant Legislation
- 1. Deferment of Acceptance - introduction
- 2. Circumstances under which deferments will be granted
- 3. Period of deferment
- 4. The deferment process where the applicant has requested deferment
- 5. The deferment process where the Registrar may grant deferment on his or her own initiative
- 6. Termination of deferment
- 7. Transitional practice
- Annex A1 - Deferment of acceptance date - Grounds and time limits
- Part 18 Finalisation of Application for Registration
- Relevant Legislation
- 1. Introduction
- 2. Accepting an application for registration
- 3. Rejection of an application for registration
- Part 19A Use of a Trade Mark
- Relevant Legislation
- 1. Use of a trade mark generally
- 2. Use 'as a trade mark'
- 3. Use 'in the course of trade'
- 4. Australian Use
- 5. Use 'in relation to goods or services'
- 6. Use by the trade mark owner, predecessor in title or an authorised user
- 7. Use of a trade mark with additions or alterations
- 8. Use of multiple trade marks
- Part 19B Rights Given by Registration of a Trade Mark
- Relevant Legislation
- 1. The trade mark as property
- 2. What rights are given by trade mark registration?
- 3. Rights of an authorised user of a registered trade mark
- 4. The right to take infringement action
- 5. Loss of exclusive rights
- Part 20 Definition of a Trade Mark and Presumption of Registrability
- Relevant Legislation
- 1. Definition of a trade mark
- 2. Background to definition of a trade mark
- 3. Definition of sign
- 4. Presumption of registrability
- 5. Grounds for rejection and the presumption of registrability
- Part 21 Non-traditional Signs
- Relevant Legislation
- 1. Non-traditional signs
- 2. Representing non-traditional signs
- 3. Shape (three-dimensional) trade marks
- 4. Colour and coloured trade marks
- 5. "Sensory" trade marks - sounds and scents
- 6. Sound (auditory) trade marks
- 7. Scent trade marks
- 8. Composite trade marks - combinations of shapes, colours, words etc
- 9. Moving images, holograms and gestures
- 10. Other kinds of non-traditional signs
- Part 22 Section 41 - Capable of Distinguishing
- Relevant Legislation
- 1. Registrability under section 41 of the Trade Marks Act 1995
- 2. Presumption of registrability
- 3. Inherent adaptation to distinguish
- 4. Trade marks considered sufficiently inherently capable of distinguishing
- 5. Trade marks that have limited inherent capacity to distinguish but are not prima facie capable of distinguishing
- 6. Trade marks having no inherent adaptation to distinguish
- 7. Examination
- Registrability of Various Kinds of Signs
- 8. Letters
- 9. Words
- 10. Phonetic equivalents, misspellings and combinations of known words
- 11. Words in Languages other than English
- 12. Slogans, phrases and multiple words
- 13. Common formats for trade marks
- 14. New terminology and "fashionable" words
- 15. Geographical names
- 16. Surnames
- 17. Name of a person
- 18. Summary of examination practice in relation to names
- 19. Corporate names
- 20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works
- 21. Titles of other books or media
- 22. Numerals
- 23. Combinations of letters and numerals
- 24. Trade marks for pharmaceutical or veterinary substances
- 25. Devices
- 26. Composite trade marks
- 27. Trade marks that include plant varietal name
- Annex A1 Section 41 prior to Raising the Bar
- Annex A2 Flowchart of "Capable of Distinguishing"
- Part 23 Overcoming Grounds for Rejection under Section 41 - including Evidence of Use
- Relevant Legislation
- 1. Introduction
- 2. Submissions in rebuttal, amendments and informal information
- 3. Evidence of use - general requirements
- 4. Examining evidence - general
- 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish
- 6. Endorsements for applications overcoming section 41 grounds for rejection
- Annex A1 - Information for applicants on the preparation and presentation of a declaration including model layout
- Annex A2 - Model layout for statutory declaration/affidavit
- Annex A3 - Model layout for supporting statutory declaration
- Annex A4 - How to supply evidence of use of a Trade Mark under subsection 41(5) - for trade marks with a filing date prior to 15 April 2013
- Annex A5 - How to supply evidence for use of a Trade Mark under subsection 41(6) - for trade marks with a filing date prior to 15 April 2013
- Annex A6 - How to supply evidence of use of a trade mark under subsection 41(4) - for trade marks with a filing date on or after 15 April 2013
- Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013
- Part 24 Disclaimers
- Relevant Legislation
- 1. What is a disclaimer?
- 2. Request for a voluntary disclaimer
- 3. Effect of a disclaimer on registration
- 4. Effect of a disclaimer on examination
- 5. Amendment of disclaimers
- 6. Revocation of disclaimers
- Part 26 Section 44 and Regulation 4.15A - Conflict with Other Signs
- Relevant Legislation
- 1. Introduction to section 44 and regulation 4.15A
- 2. Presumption of registrability and the application of section 44
- 3. Cross Class Search List
- 4. Similarity of goods and services
- 5. Similarity of trade marks
- 6. Factors to consider when comparing trade marks
- 7. Trade marks with the same priority/filing date
- 8. Assignment of applications and registrations
- 9. Grounds for rejection when the citation is in its renewal period
- Annex A1 - Citing multiple names
- Part 27 Overcoming Grounds for Rejection under Section 44
- Relevant Legislation
- 1. Introduction
- 3. Amending the goods and/or services of the applicant's specification
- 4. Negotiation with owner/s of conflicting trade mark/s
- 5. Filing evidence of honest concurrent use, prior use or other circumstances
- 6. Removal of the conflicting trade mark
- 7. Dividing the application
- Annex A1 - An example of a letter of consent
- 2. Legal submissions
- Part 28 Honest Concurrent Use, Prior Use or Other Circumstances
- Relevant Legislation
- 1. Introduction
- 2. Honest concurrent use - paragraph 44(3)(a)
- 3. Examining evidence of honest concurrent use - the five criteria
- 4. Other circumstances - paragraph 44(3)(b)
- 5. Conditions and limitations to applications proceeding under subsection 44(3)
- 6. Prior use - subsection 44(4)
- 7. Examining evidence of prior use
- 8. Endorsements where the provisions of subsection 44(3) or 44(4) and/or reg 4.15A are applied
- Annex A1 - Information sheet for trade mark applicants - Evidence of honest and concurrent, prior use or other circumstances
- Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion
- Relevant Legislation
- 1. Trade marks likely to deceive or cause confusion
- 2. Connotation
- 3. Deception and confusion as a result of a connotation within a trade mark
- 4. Descriptions of goods/services
- 5. International Non-Proprietary Names and INN Stems
- 6. Names of Persons
- 7. Phonewords and Phone Numbers
- 8. Internet Domain Names
- 9. Geographical References
- 10. Claims to Indigenous Origin
- Annex A1 - Table of INN stems
- Part 30 Signs that are Scandalous and Use Contrary to Law
- Relevant Legislation
- 1. Introduction
- 2. Scandalous signs
- 3. Use contrary to law
- Annex A1 - Examples of Legislation which may trigger the provisions of section 42(b)
- Annex A2 - Official notice re copyright in the Aboriginal Flag
- Annex A3 - Defence force prohibited terms and emblems
- Annex A4 - Major Sporting Events protected words
- Part 31 Prescribed and Prohibited Signs
- Relevant Legislation
- 1. Prohibited signs - subsection 39(1)
- 2. Prescribed signs - subsection 39(2)
- 3. When does a ground for rejection exist under subsection 39(2)?
- 4. Practice regarding the signs prescribed under subsection 39(2) appearing in subreg 4.15
- 5. Other information relevant to examining trade marks that contain a prohibited and prescribed sign
- Part 32A Examination of Trade Marks for Plants (in Class 31)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Plant Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 39: Prescribed Signs
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 43: Deception and Confusion
- 2.5 Section 44: Comparison of Trade Marks
- 2.6 Non-Roman characters (NRC) and transliterations in class 31 plant examination
- Annex 1 - Applicable Section of the PBR Act
- Annex 2 - Applicable Sections of the UPOV Convention
- Annex 3 - Applicable Sections of the ICNCP
- Annex 4 - An Example of a PBR Letter of Consent
- Annex 5 - Case Law Summaries
- Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material
- Part 32B Examination of Trade Marks for Wines (in Class 33)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Wine Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 43: Deception and Confusion
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 44: Comparison of Trade Marks
- 3. Protected Terms in Specifications of Goods
- Part 33 Collective Trade Marks
- Relevant Legislation
- 1. What is a collective trademark?
- 2. Application of Act
- 3. Application for registration
- 4. Limitation on rights given by registered collective trade marks
- 5. Assignment or transmission of collective trade marks
- 6. Infringement of collective trade marks
- Part 34 Defensive Trade Marks
- Relevant Legislation
- 1. Australian trade marks law and defensive trade marks
- 2. Requirements for the filing of a defensive trade mark
- 3. Section of the Act NOT applying to defensive trade marks
- 4. Registrability of defensive trade marks
- 5. Grounds for rejection under Division 2 of Part 4 of the Act
- 6. Grounds for rejecting a defensive application under section 187
- 7. Evidence required for defensive applications
- 8. Rights given by defensive registration
- 9. Grounds for opposing a defensive registration
- 10. Cancellation of defensive trade marks
- Part 35 Certification Trade Marks
- Relevant Legislation
- 1. What is a certification trade mark?
- 2. Certification trade marks and geographical indications (GIs)
- 3. Sections of the Act NOT applying to certification trade marks
- 4. The registrability of certification trade marks
- 5. Rights given by, and rules governing the use of, certification trade marks
- 6. Assessment by the Australian Competition and Consumer Commission (ACCC)
- 7. Opposition to the registration of a certification trade mark
- 8. Variation of rules
- 9. Assignment of registered certification trade marks
- 10. Assignment of unregistered certification trade marks
- 11. Transmission of certification trade marks
- 12. Rectification of the Register and variation of rules by order of the court
- Annex A1 - Certification Trade Marks flow chart
- Part 38 Revocation of Acceptance
- Relevant Legislation
- 1. What is revocation of acceptance?
- 2. Reasons for revocation
- 3. Revocation process
- Part 39 Registration of a Trade Mark
- Relevant Legislation
- 1. Overview of registration
- 2. Particulars of registration
- 3. Format of Certificate of registration
- 4. Timing
- 5. Date and term of registration
- 6. Registration fees
- 7. Registration process
- 8. Notification of Protection process for International Registrations Designating Australia
- Annex A1 - Certificate of Registration
- Part 40 Renewal of Registration
- Part 41 Cancellation of Registration
- Relevant Legislation
- 1. What is the effect of cancelling a registration?
- 2. Why is a registration cancelled?
- 3. Cancellation process
- Part 42 Rectification of the Register
- Relevant Legislation
- 1. What is rectification?
- 2. What part does the Registrar play in rectification actions brought by a person aggrieved?
- 3. Rectification procedures
- Annex A1 - Flow chart of rectification procedure
- Part 43 Assignment and Transmission
- Relevant Legislation
- 1. What is assignment and transmission?
- 2. Timing for assignment
- 3. Application to record assignment etc
- 4. Process for assigning all goods and/or services (full assignment)
- 5. Process for assigning only some goods and/or services (partial assignment)
- 6. Process for assignment of certification trade marks
- 7. Transmission of certification trade marks
- Part 44 Claim of Interest or Rights in a Trade Mark
- Relevant Legislation
- 1. Background
- 2. Effect of recording the claim
- 3. When can the interest be recorded?
- 4. Recording the claim
- 5. Amending the record of a claim
- 6. Cancelling the record of a claim
- Part 45 Copies of Documents
- Relevant Legislation
- 1. Documents copied by the Office
- 2. Types of copies requested
- Annex A1 - Flow chart of production of copies/certified copies
- Part 46 Grounds for Opposition to Registration or Protection
- Relevant Legislation
- References used in this part
- 1. What is opposition to registration or protection?
- 2. The Registrar’s role in an opposition
- 3. When registration or protection can be opposed
- 4. Grounds for opposition to registration of national trade marks
- 5. Grounds for opposition to protection of international trade marks
- Part 47 Procedures for Opposing Registration or Protection
- Relevant Legislation
- 1. Filing a notice of opposition
- 2. Request to amend a notice of intention to oppose or a statement of grounds and particulars
- 3. Filing a notice of intention to defend
- 4. Opposition may proceed in the name of another person
- 5. Making Convention documents available to opponent
- Part 48 Removal of a Trade Mark from the Register for Non-use
- Relevant legislation
- References used in this part
- 1. What if a trade mark is not used?
- 2. Application for removal/cessation of protection for non-use
- 3. Opposition to a non-use application
- 4. Application for extension of time to oppose the non-use application where the trade mark is already removed
- 5. Grounds on which a non-use application may be made
- 6. Burden on opponent to establish use of a trade mark
- 7. Authorised use by another person
- 8. Use by an assignee
- 9. Localised use of trade mark
- 10. Circumstances that were an obstacle to the use of a trade mark
- 11. Where there is no evidence in support of the opposition
- 12. Registrar's discretion in deciding an opposed non-use application
- 13. Registrar to comply with order of court
- 14. Right of appeal
- 15. Certificate - Use of a trade mark
- Part 49 Non-use Procedures
- Relevant legislation
- 1. Application for removal or cessation of protection of a trade mark for non-use
- 2. Opposition to non-use application
- 3. Amendment to notice of intention to oppose or statement of grounds and particulars
- 4. Notice of intention to defend
- 5. Opposition may proceed in the name of another person
- 6. Opposition proceedings
- Part 51 General Opposition Proceedings
- Relevant Legislation
- 1. Evidence
- 2. Extension of the period for filing evidence
- 3. Cooling-Off Period
- 4. Suspensions
- 5. Hearing of the opposition
- 6. Dismissal or discontinuance of proceedings
- 7. Award of costs
- 8. Rights of appeal
- 9. Period in which a trade mark can be registered/protected
- 10. Guidelines for Revocation of Acceptance of Opposed trade marks
- 11. Unilateral Communications with Hearing Officers
- Part 52 Hearings, Decisions, Reasons and Appeals
- Relevant Legislation
- References used in this Part
- 1. What is a decision?
- 2. What is a hearing?
- 3. Is a hearing always necessary?
- 4. Role and powers of the Registrar in hearings
- 5. Rights of appeal from decisions of the Registrar
- 6. Appeals from decisions of the Federal Court etc.
- 7. Implementation of decisions
- 8. Service of documents on the Registrar
- Part 54 Subpoenas, Summonses and Production of Documents
- Relevant Legislation
- 1. Subpoenas
- 2. Summonsing a witness
- 3. Production of documents
- Annex A1 - Consequences of mishandling a subpoena
- Annex A2 - Format of a summons to witness
- Annex A3 - Format of notice requiring production
- Part 55 Costs
- Relevant Legislation
- 1. Legislative Basis
- 2. Award of costs
- 3. Applications for an award of costs
- 4. Determination of the amount of costs
- 5. Full costs where certificate of use of a trade mark provided to removal applicant
- 6. Costs recovery
- 7. Security for costs
- Annex A1 - Taxing of costs in "multiple" oppositions relying on same evidence
- Part 60 The Madrid Protocol
- Relevant Legislation
- Glossary
- 1. Introduction
- 2. International Applications
- 2.1 General Description
- 2.2 International Application Form
- 2.3 Data Entry
- 2.4 Certifying Process
- 2.5 Fees for International Applications
- 2.6 Renewal
- 3. The Basic Application or Basic Registration (Basic Trade Mark)
- 4. International Registrations that have Designated Australia
- 4.1 General Description
- 4.2 Record of International Registrations
- 4.3 Filing/Data Capture/Allocation of Australian Trade Mark Number
- 4.4 Indexing
- 4.5 Expedite
- 4.6 Classification of Goods and Services
- 4.7 Examination of an IRDA
- 4.8 Reporting on an IRDA
- 4.9 Provisional Refusal
- 4.10 Amendments
- 4.11 Deferment of Acceptance
- 4.12 Extension of Time
- 4.13 Final Decision on Provisional Refusal Based on Examination
- 4.14 Acceptance
- 4.15 Revocation of Acceptance
- 4.16 Extension of Time to File Notice of Opposition to Protection
- 4.17 Opposition to Protection
- 4.18 Protection
- 4.19 Cessation or Limitation of Protection
- 4.20 Cessation of Protection because of Non-Use
- 4.21 Opposition to Cessation of Protection because of Non-Use
- 4.22 Renewal
- 4.23 Claim to Interest in, or Right in Respect of a Trade Mark
- 4.24 Change in Ownership of an International Registration
- 4.25 Transformation
- 4.26 Replacement
- 4.27 Customs
- Part 61 Availability of Documents
- Relevant Legislation
- 1. Availability of Documents
- 2. Accessing Documents
- 3. Documents to be made Available for Public Inspection (API)
- 4. Information that the Registrar of Trade Marks will Not Accept in Confidence
- 5. Confidential Information in Correspondence
- 6. Policy in relation to TM Headstart
- Part 62 Revocation of Registration
- Relevant Legislation
- 1. What is revocation of registration?
- 2. Prerequisites to revocation of registration
- 3. Factors to be taken into account before deciding whether revocation of registration is reasonable
- 4. Circumstances under which registration may be revoked
- 5. Mandatory revocation
- 6. Right of appeal: revocation of registration
- 7. Extension of time
- 8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)
- 9. Registrar must notify Customs if protection of a PITM is revoked
- 10. Right of appeal: cessation of protection
51.2. Extension of the period for filing evidence
It is in the public interest that opposition proceedings are conducted as efficiently and predictably as possible. The Registrar expects the parties to file their evidence in the statutory periods allowed for that purpose. However the Registrar is aware that, despite the parties’ best endeavours, it may not always be possible to do so. Accordingly the Registrar may extend the statutory period for filing evidence. The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) limited the circumstances under which an extension of time may be granted. Those circumstances are stated in regulations 5.15, 9.18, 17A.34K, 17A.48T.
Summary Guidance for Parties Filing Evidence
When planning for the filing of evidence it is important that parties are aware of the requirements for obtaining extensions of time. There are strict requirements for obtaining extensions of time for filing evidence. Absent exceptional circumstances, parties must show that they have made all reasonable efforts to comply with all filing requirements, and that they have acted promptly and diligently at all times to ensure the evidence is filed within the period. Detailed guidance is found below, however key points for parties to have in mind at an early stage (i.e. before the start of an evidence period) include:
- Reasonableness of conduct relates to conduct across the whole of the opposition, so it is useful to plan early, where possible, for the filing of evidence, including the consideration of appropriate declarants.
- Important to obtaining an extension of time is an explanation of what was done, when it was done, how it was done and by whom. A narrative along with a chronology of actions is typically very helpful.
- Acting reasonably at all times, along with being prompt and diligent, is not a standard of perfection. What is required is a reasonable plan executed well, with no significant unexplained delays. An explanation of the circumstances of the case is necessary for a delegate to determine whether a party has been sufficiently prompt and diligent.
- Where simple errors on the part of a party prevent evidence being filed on time, an extension may still be appropriate.
What is sufficient depends on the case, but in general there should be an explanation of the overall strategy for preparing evidence, a description of what was done, and when it was done, and a discussion of any unexpected difficulties that arose. Providing a fulsome picture of the circumstances upfront will assist in reducing the time taken to resolve the extension. Where the information initially provided is insufficient to satisfy the delegate, an opportunity for the party to provide further information is likely to be provided, and the delegate will clearly outline specific information that could be provided by the party so as to satisfy the criteria. Any further information requested, or queries raised by the delegate should be directly addressed in responding.
2.1 Applying for an extension
Only the applicant or the opponent can apply for an extension although the application for the extension may be filed on their behalf by their legal representative.
The application should include the following information:
- the name of the party applying for the extension
- the trade mark number
- the length of time required in months
- an explanation of why the extension is required
The application for an extension of time to file evidence must be filed with IP Australia. IP Australia will give a copy of the application to the other party.
The fee for filling the application must be paid at the time the application is filed (see Schedule 9 to the Regulations). The application may be taken not to have been filed unless the fee is paid (section 223(4)(b) and reg 21.21A).
It is highly desirable that the application be filed with IP Australia before the period in which to file evidence has expired.
2.2 Reasons for the extension for evidentiary periods
Under regulations 5.15, 9.18, 17A.34K, 17A.48T the period for filing evidence may be extended if the Registrar is satisfied that the party:
1. has made all reasonable efforts to comply with all of the relevant filing requirements; and
- despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so, or
2. there are exceptional circumstances that justify the extension (regs )
Reasonable efforts, prompt and diligent at all times
An extension is available if a party fails to meet the time period despite acting promptly and diligently at all times. It follows that the Registrar will not extend a time period because of delays caused by a failure to act diligently or promptly either by the party, their agent or legal representative, or an expert engaged by them.
A party is required to make “all reasonable efforts” to comply with relevant filing requirements, and to have acted “promptly and diligently at all times”. Consequently, a party making a request to the Registrar for an extension of time should be able to demonstrate a consistent overall pattern of reasonable effort, promptness and diligence in relation to all their endeavours so far to file their evidence within the statutory timeframe.
Acting reasonably and being prompt and diligent, is not a standard of perfection. However, the party seeking an extension must provide sufficient information for a delegate to decide that, on balance, the party’s plan for evidence preparation was reasonable, and that plan was executed promptly and diligently.
‘An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.’ Tred Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57, [76]
The party will need to provide an explanation of why it was not possible to complete the evidence on time. This necessarily focuses attention on the actions that the party has taken throughout the preparation of their evidence, not on the actions that they intend taking if the extension is granted. For instance, an extension is not available merely "in order to allow a declaration to be signed by the declarant", because that does not explain why the evidence was not completed in time. Rather, in order to obtain an extension a party will need to explain why they were unable to have the declaration signed during the existing time period, despite acting promptly and diligently to ensure it was done in time.
What is sufficient will depend on the case, but in general there should be a reasonable plan for the preparation of evidence that is executed promptly and diligently with no significant unexplained delays. This requires an explanation of the overall strategy for preparing evidence, a description of what was done, and when it was done, and a discussion of any unexpected challenges that arose. When offering details of what was done and when, it is sufficient to focus on the major parts of the evidence preparation process. It is not necessary to provide a detailed timeline of every step taken. Where a simple error on the part of a party prevents evidence from being filed on time, an extension of time may still be appropriate provided the party can demonstrate they have acted reasonably, promptly, and diligently.
The following matters would suggest that a party had not made all reasonable efforts and acted promptly and diligently to comply with an evidentiary period:
- significant unexplained delays, e.g. in finalising the evidence of the appropriate person authorised to make a declaration on behalf of the applicant or opponent company.
- delays in obtaining expert evidence that could have been anticipated and acted on
- unavailability of relevant declarants due to involvement in other matters, unless the party had exhausted all efforts to find alternative declarants
- the extension is being sought to obtain evidence of matters not referred to (either directly or by clear implication) in the statement of grounds and particulars
- delays due to intervening holidays, leave, etc which were known or could have been expected
- the adoption of an inherently lengthy process of evidence preparation, such as that which may be required for survey evidence. The use of survey evidence is a matter of choice, and parties must ensure that no delay arises from this choice.
The nature and the significance of the evidence that is being prepared may be relevant to the reasonableness of the actions of the party.
Exceptional Circumstances
Exceptional circumstances include (but are not limited to): a circumstance beyond the control of a party; an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement; an order of a court or a direction by the Registrar that the opposition be stayed. Parties should not expect that time needed for the purpose of settlement negotiations will be considered under these provisions. Time needed for that purpose should be applied for under the appropriate suspension or cooling-off provisions.
The Registrar will decide the length of the extended period with regard to what is reasonable in the circumstances and may do so on terms that the Registrar considers appropriate.
2.3 Grant of the extension
When an application for an extension is filed at IP Australia, the Registrar will delegate an officer to decide whether there is a prima facie case for the grant of the extension. The delegate needs to be satisfied the extension applicant has made out either of the grounds on which an extension may be granted and that there is sufficient reason to exercise the Registrar’s discretion and grant the extension. If the delegate is so satisfied, both parties will be notified that the other party is being given an opportunity to make representations concerning the application.
If the delegate finds the extension applicant has not made out either of the extension grounds or that there is not sufficient reason to exercise the Registrar’s discretion, both parties will be notified that the Registrar intends to refuse the extension. The extension applicant will be given an opportunity to provide further information in support of the grant of the extension or to ask to be heard about the intended refusal.
If the extension applicant does not respond to that notice the delegate will refuse the extension. If it does respond by supplying further information which does satisfy the delegate, the other party will be given an opportunity to make representations concerning the application.
Representations concerning the application may be made in writing or at a hearing. If the delegate finds the other party’s written submissions have merit, the extension applicant will be given an opportunity to respond. If the delegate finds the written submissions have no merit the extension will be granted and both parties provided with reasons for the delegate’s decision (reg 21.20).
This process means it may take some time before the delegate decides whether or not to grant the extension. If the extension is only for a month, the relevant date may have passed before the decision is made. Even if the extension has not yet been granted the onus is on the person applying for the extension to file their evidence before the relevant date expires.
PLEASE NOTE: If the extension is granted but the relevant date has passed without the evidence having been filed, it is highly unlikely the extension applicant will be able to make out either of the grounds for the grant of a further extension. The time taken to decide the first extension is not an exceptional circumstance.
2.4 Refusal of the extension
The consequence of the extension being refused will depend on the stage and nature of the proceedings.
Opposition to registration or protection
- If the extension was for filing evidence in support, a date will be set for the other party to file its evidence in answer
- If the extension was for the filing of evidence in answer, a date will be set for the other party to file its evidence in reply unless no evidence in answer has been filed in which case the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.
- If the extension was for filing evidence in reply, the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.
Opposition to removal or cessation of protection
- If the extension was for filing evidence in support and some evidence was filed in the statutory period, a date will be set for the other party to file its evidence in answer unless no evidence in support has been filed in which case the application for removal or cessation of protection will proceed.
- If the extension was for filing evidence in answer and some evidence was filed in the statutory period, a date will be set for the other party to file its evidence in reply unless no evidence in answer has been filed in which case the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.
- If the extension was for filing evidence in reply, the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.
2.5 Evidence filed out of time
The decision in a trade mark opposition is an administrative decision and it is not final. The parties have the option of having the matter decided by a court. Proceedings in court are more expensive to conduct than proceedings before the Registrar and are likely to take longer. However, that is not sufficient reason to deviate from the principle that an opposition proceeding before the Registrar should be conducted as efficiently and predictably as possible. As a general rule evidence that is not filed in time is not considered by the delegate when deciding the opposition.
Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party. The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account. The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).
The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must both pay the relevant fee and make a compelling case in favour of it being considered. The issues the filing party needs to address in its submissions include:
- Why the evidence was filed after the due date
- If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
- What the evidence shows
- Why that information is crucial to the delegate’s decision
- Why it is in the public interest to have the information considered
- What is the balance of convenience for the parties if the information is considered.
Out of time evidence must be filed on Objective Connect together with the submissions in support of its consideration. The Registrar will advise the other party that the material has been filed and that no decision will be made until the evidence stage of the opposition has ended and one or both parties have asked to be heard. At that time the delegate who is to hear the opposition will decide whether or not there is a compelling case for the information to be considered.
If the delegate is not satisfied that there is a compelling case, both parties will be advised that the matter will proceed to hearing and decision based on evidence that has been properly filed. If the delegate is satisfied there is a compelling case, the other party will be given an opportunity to make representations in the matter before the delegate decides whether or not to consider the information.
Amended Reasons
Amended Reason | Date Amended |
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Updated to include a reference to fees. |
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Hyperlinks updated |
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Part 51.2 Extension of the period for filing evidence - Updated to include a summary of guidance for parties filing evidence. |
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Update hyperlinks |
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