Amendments to trademark legislation

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Earlier this year the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Act”) was passed.

The Act is seeking to address identified problems and delays that have been caused in the past by opposition proceedings.

Some of the changes to the Trademark Act include:

Service of Notice of Opposition:

Opponents will now file the Notice of Opposition with the Trademarks Office and the Trademarks Office will then send a copy of the notice to the applicant.

Obligation to file Statement of Grounds and Particulars:

Statement of Grounds and Particulars on which the opponent intends to oppose the Trademark Application will now need to be filed within 1 month of filing the Notice of Opposition with very limited ability to amend the Statement of Grounds once it is filed. The Registrar will also have the power to dismiss the opposition where an opponent does not comply with the obligation to file a Statement of Grounds and Particulars. This will ensure that complete information relevant to the opposition proceedings is provided early in an attempt to eliminate unnecessary delays.

Applicants to file notice of intention to defend:

There is a new requirement for trademark applicants to file a notice stating their intention to defend their application in the opposition proceedings. The penalty for not filing a notice will be the application lapsing. This allows an uncontested opposition to be resolved sooner.

Additional damages for infringement:

The Act now also provides for additional damages to be awarded in relation to trademark infringement.

If we can be of any further assistance in relation to either applying for a trademark or opposing an application for a trademark please contact either Tim Osborn or Alison Garland.

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