51.4. Suspensions

4.1  Suspension of proceedings for settlement negotiations

PLEASE NOTE: Suspension of the opposition proceedings is available (in certain circumstances) once the option of the (two 6 month) cooling-off provisions has been fully utilised, following the filing of a Notice of Intention to Oppose and a supporting Statement of Grounds and Particulars.  The cooling-off provisions along with tighter extension of time provisions (commenced on 15 April 2013 as part of the Raising the Bar legislation) is intended to reduce excessive reliance on suspension requests of the opposition evidence timetable.

A direction may be made for the evidence stage of opposition proceedings to be temporarily suspended in order to give the parties the opportunity to conduct settlement negotiations without the need to apply and pay for successive extensions of the period within which to file evidence.   

A form to request proceedings be suspended or for suspension to be continued is available on IP Australia’s website.  

There is no fee for requesting suspension.

The relevant regulations for seeking a suspension are set out below:

• Regulation 5.19 for Section 52 Opposition to registration of the trade mark: Section 177 Opposition to Certification of a trade mark and Section 187 Opposition to the registration of a Defensive trade mark.  
• Regulation 9.21 for section 96 Opposition to a Non Use Removal Application.
• Regulation 17A.34Q for Regulation 17A.32 Madrid Opposition to a protected of the trade mark.  
• Regulation 17A.48W for Regulation 17A.48F Opposition to a Cessation of a protected a trade mark for Non-Use.​​​​​​​

The Registrar will only suspend proceedings if the request is made by both parties or if the party requesting suspension provides the written consent of the other side.

The parties may request the Registrar to suspend proceedings for an initial period of up to six months and in exceptional circumstances one year. The initial suspension may be continued provided the Registrar is satisfied negotiations have progressed such that there is a real likelihood of settlement.  That will be determined on a case by case basis.

The Registrar will advise both parties in writing that proceedings have been suspended and give notice that if they wish the suspension to continue beyond the initial expiry date they should apply at least two weeks before the suspension is due to end.  If the parties do not request continuation of the suspension, the Registrar will allow the relevant party three months to file its evidence in support or answer, or two months for evidence in reply, once the suspension has ended and advise both parties in writing.

Suspension of proceedings does not automatically mean a party is entitled to delay preparation or finalising completion of its evidence.

The Registrar is aware that the preparation of evidence can be expensive and time consuming.  It is a matter of judgment for the relevant party whether negotiations are likely to be successful in which case it will not have to rely on any evidence.  However, it should be aware that if suspension ends without settlement being reached the Registrar is unlikely to allow more than three months for it to file its evidence unless it is able to demonstrate that it was justified in delaying the preparation/finalisation of its evidence.  

The Registrar is unlikely to consider a party had sufficient reason to delay gathering its evidence if the only negotiations that occurred during the period proceedings were suspended were the sending of a letter of demand on its part without any substantive response from the other side.  The Registrar may consider a party had sufficient reason to delay if negotiations had been actively pursued by both parties during the period of suspension and had reached a stage where terms of settlement had been agreed before breaking down.  That will be decided on a case by case basis.

If one or both parties request that suspension be terminated early, the Registrar will set a date for the relevant party to file its evidence or direct the matter be set down for hearing or a fee paid decision as appropriate.

4.2  Suspension of proceedings pending judgment in relevant court matter

Opposition proceedings before the Registrar of Trade Marks may raise the same issues of fact and law as those before a court.  The Registrar has, where appropriate, directed that opposition proceedings be suspended until the court hands down its judgment (Ayrton Senna Promocoes e Emprendimentos Ltda v Senna Racing Team Pty Ltd (1998) 41 IPR 395).  

That practice was considered in Cadbury UK Ltd v Registrar of Trade Marks (2008) 77 IPR 608 which was a review under the Administrative Decisions (Judicial Review) Act 1977 of the Registrar’s decision to suspend proceedings in Cadbury Ltd v Darrell Lea Chocolate Shops Pty Ltd (2008) 75 IPR 581.

Finkelstein J noted:

[T]he effect of the Trade Marks Act and the regulations is that the registrar must take all necessary steps to get opposition proceedings ready for hearing as soon as practicable and thereafter hold the hearing. The merits are determined on the evidence before the registrar and on the law as it is when the hearing takes place. ...

Sometimes the law is unclear. In that event, it may be appropriate to adjourn proceedings to await the law’s clarification. ...

But the authorities establish that a case should not be adjourned for an indefinite period to await clarification of the law.

In the matter before him His Honour found that:

[T]o delay opposition proceedings for an indeterminate period, a period that could stretch out to three, four or even more years, amounts to a refusal by the delegate to hear those proceedings. The second reason is that the delegate was asked (and appears to have been prepared) to give too much significance to findings of fact made by the Federal Court. …

To proceed on the basis that it is unlikely that the registrar will depart from the court’s findings and, that there is a public interest in avoiding inconsistent fact findings, indicates to me that there is a real risk that the delegate was not going to decide for herself the issues that must be decided to dispose of the opposition proceedings.

Sometimes there will be circumstances in which it is appropriate to delay opposition proceedings and await a court’s resolution of disputed facts that may be relevant in opposition proceedings. It is not possible to say with any precision what those circumstances might be. They would include (a) the degree of similarity of the issues involved, (b) the significance of the issues to the opposition proceeding, (c) whether the registrar has more evidence than the trial judge, (d) the likelihood of the judge’s findings being challenged, and (e) whether it may be unfair (that is a breach of the rules of natural justice) to rely on the judge’s findings or the evidence on which those findings were based.

His Honour ordered the decision to suspend proceedings be set aside.

The onus is on the party requesting suspension to establish the circumstances which make it appropriate to delay proceedings.   In Lion Nathan Australia Pty Ltd v E & J Gallo Winery (2009) 84 IPR 160 the Registrar’s delegate found it was not appropriate to suspend proceedings pending the outcome of an appeal in the High Court. He was not satisfied the ruling of the High Court would determine any of the issues in proceedings before the Registrar.

4.3  Suspension of proceedings for any other reason

A direction is made to suspend proceedings in relation to an opposition to protection of an IRDA if the Registrar is informed (with the appropriate document) the holder of the international registration has requested the International Bureau to record its renunciation of the Australian designation under rule 25 of the Common Regulations.  The Registrar will direct that proceedings be suspended for six months in order to allow sufficient time for the International Bureau to process the holder’s request and notify IP Australia accordingly.  

The parties should inform the Registrar if there is any delay by the International Bureau in processing the request and a suspension of more than six months is required.

There may be other circumstances that prompt a suspension of the opposition evidence timetable or a deferment of the hearing or written determination of the substantive opposition.  The Registrar may on request or at Her discretion suspend the timetable of an opposition pending the completion of a related matter that may impact on the outcome of the substantive opposition. Such circumstances may include referral of an opposed non-use removal/cessation proceeding to the court, a natural disaster or office closure.

Each request or circumstance will be decided on its merits and on a case by case basis and if appropriate the parties given an opportunity to make representations on a proposed direction in accordance with the relevant provisions of the Trade Mark Regulations 1995.