60.4.17 Opposition to Protection

4.17.1  Relevant Legislation

Madrid Protocol

Article 5 Refusal and Invalidation of Effects of International Registration in Respect of Certain Contracting Parties

Madrid Protocol Regulations

Rule 16 Possibility of Notification of a Provisional Refusal Based on an Opposition Under Article 5(2)(c) of the Protocol

(Time Limit for Notifying Provisional Refusal Based on an Opposition)

Rule 17(3) Additional Requirements Concerning a Notification of Provisional Refusal Based on an Opposition

Rule 18 Irregular Notifications of Provisional Refusal

Trade Marks Act 1995

Section 6        

Section 7        

Section 8        

Section 27      

Section 33      

Part 4 Div 2    

Part 5  

Section 177         

Section 187    

Section 224    

Section 228    

Section 241

Trade Mark Regulations

Part 5 Opposition to registration

Part 17A Division 3, Subdivision C  Opposition to IRDA

Trade Marks Office Manual of Practice and Procedure:

Parts 46, 47, 51, 54 and 55

4.17.2  Process

It is possible to oppose extension of protection to an IRDA.  As with national applications, a notice of intention to oppose should be filed within 2 months from the date on which acceptance is published in accordance with the regulations.  This is followed one month later by a statement of grounds and particulars. Together, the two documents comprise the notice of opposition.

For oppositions commenced before 15 April 2013, a notice of opposition was not a two-part document and there was no requirement for the holder to file a notice of intention to defend.

The 2 month period for filing a notice of intention to oppose and the one month period for filing a statement of grounds and particulars can be extended under the provisions of Regulation 17A.34C

• See Part 47 Procedures for Opposing Registration or Protection – 1.3 Extension of time for filing a notice of intention to oppose or a statement of grounds and particulars.

See also 4.16 Extension of Time to File Notice of Opposition to Protection.

The notice of intention to defend is a new and important requirement to be provided by the holder of an IRDA one month after a complete (two-part) notice of opposition is given. If the notice of intention to defend is not filed, the opposition may be taken to have succeeded and the IRDA will not be protected.

Article 5 of the Madrid Protocol explains that an office may notify a refusal of protection after the expiry of the 18 month time limit in certain circumstances:

• IF it has notified the IB, before the expiry of the 18 month time limit, of the possibility of oppositions being filed after the expiry of the 18 month time limit,
• AND the notification of refusal based on opposition is made not more than:
• seven months from the date on which the opposition period begins (i.e. from the date of publication of acceptance) (Rule 17 of the Madrid Protocol Regulations), or
• one month after the end of the three month opposition period where there is no extension of time granted to file Notice of Opposition.

IP Australia needs to notify the IB of the opposition period dates so that the IB can ascertain that notification of refusal based on opposition has been filed within the relevant time limit of four or seven months from the start of the opposition period. The four month period applies where a complete notice of opposition (i.e. notice of intention to defend and statement of grounds and particulars) is filed within the 3 months of the publication of acceptance.

If IP Australia does not notify the IB of the refusal based on opposition within the specified time limit, the opposition cannot proceed, and the trade mark which is the subject of the IRDA will be protected in Australia.

• When a notice of intention to oppose is filed, IP Australia will give a copy to the holder and also provide the holder with information about the requirements for filing a notice of intention to defend one month from the date that the holder is given a copy of the complete notice of opposition (that is, after the opponent has also filed an adequate statement of grounds and particulars – due one month after the notice of intention to oppose).
• When a Notice of Opposition (that is, a notice of intention to defend, together with an adequate statement of grounds and particulars – see regs 17A.29 and 17A.32) is filed IP Australia must notify the IB of provisional refusal based on opposition including all the relevant details listed in Rule 17. A copy of the (two part) Notice of Opposition must be attached. IP Australia will also give notice to the holder directly.

When a complete Notice of Opposition is filed (that is, a notice of intention to oppose, together with an adequate statement of grounds and particulars), IP Australia will record it on the Trade Marks Office database and notify the IB as soon practicable to ensure that time limits are met (Article 5).

When the Notice of Opposition is recorded on the Trade Marks Office database a standard notice will be automatically generated.  This notice will be addressed to the opponent and will acknowledge receipt of the Notice of Opposition.

Immediately after recording the Notice of Opposition, a letter to the IB must be prepared.  This will be the Notification of Refusal Based on Opposition and will include:

• the dates of the opposition period (including any extensions to that period), the details listed in Rule 17, and
• a copy of the Notice of Opposition.
• a print out from Australian Trade Mark Search detailing section 44 prior trade marks
• a copy of the relevant trade mark legislation
• a rule 16(1)(b) letter advising the IB of dates of the opposition period (if applicable)

Once an opponent has filed a notice of opposition (comprised of a notice of intention to oppose and an adequate statement of grounds and particulars) the IRDA holder must file a notice of intention to defend if they wish to contest the opposition and maintain their rights.

• If the holder does not file a notice of intention to defend, together with an Australian or New Zealand address for service, the Registrar may decide to take the opposition to have succeeded and refuse protection to the holder (subregs 17A.34H(2) and (4)).
• If the holder does not provide the Registrar with an address for service in Australia or New Zealand, the Registrar is not required to take any action in response to the notice of intention to defend, or to give the IRDA holder an opportunity to make written representations or to be heard (subregs 17A.34H(5) and (6)).
• An extension of time to file a notice of intention to defend may be requested under regulation 17A.34HA. The application to extend time must be made within three months from when the Registrar notifies the IB under subregulation 17A.32(2) (subregulation 17A.34HA(2)).

The Registrar will notify the parties of the status of the opposition after the notice of intention to defend is or is not filed.

If the opposition is to proceed, the file will follow the usual opposition process and existing procedures (including provision for a cooling-off period), as outlined in Part 51 General Opposition Proceedings, until a decision is reached and the appeal period has expired.

The opposition proceeds as for national applications with the filing of evidence in support, evidence in answer, evidence in reply, a hearing and the Registrar’s decision.  Once a decision on the opposition has been issued, and the appeal period has expired, IP Australia must notify the IB of the final decision on the refusal based on opposition.  If the Registrar's decision is appealed the IB is notified of the final decision after all proceedings have concluded.

4.17.3  Final decision after opposition

Under regulation 17A.34N a final decision after a refusal based on opposition must be issued.  The final decision may be:

• full refusal, or
• extension of protection for some only of the goods and/or services of the IRDA