The differences in trademark laws between Australia and New Zealand should be noted by persons and companies planning on filing oppositions. These differences range from the preparation of the notices of opposition to the timeframes of the opposition process. Let’s take a brief look at a few of these differences.
Preparation of the Notices of Opposition
In Australia, a notice of opposition consists of these documents:
If you want to file a notice, you must do it within two months after the subject trademark application has been published for acceptance in the Official Journal. You can file the statement of grounds and particulars a month after the filing of the notice of opposition.
There are approved forms for both documents available on the IP Australia website. If you use other formats, your notice will not be accepted.
Furthermore, the statement of grounds and particulars should be sustainable and verifiable. The Registrar has the discretion to deem the statement as inadequate as well as to delete grounds, even dismiss the entire opposition.
In New Zealand, deadline for filing a notice of opposition is longer – three months from the date of publication of acceptance. The notice must already include the statement of grounds as well as specify the class of goods and/services related to the opposition. The statement must quote the specific sections of the trademark law.
As in Australia, the statement of grounds for opposition should be substantial and verifiable. Notices of opposition with unsustainable grounds can be entirely dismissed.
Getting Time Extensions
In Australia, extensions of time can only be secured under specific circumstances as defined in legislation. The extension of the deadline for filing either the notice of opposition or the statement of grounds and particulars may occur when:
Take note that only “exceptional circumstances” will likely persuade the Registrar to grant a time extension. This is also true in case the requesting party ably demonstrates making “all reasonable efforts” in meeting the deadline. But it doesn’t stop there – the requesting party should also demonstrate that he has acted in a diligent and prompt manner at all times in meeting the deadline.
In New Zealand, the deadline for filing the notice can be extended for up to a month. The person filing the opposition should request the time extension.
But another two months of time extension can be granted to the opposing party. The consent of the trademark applicant must be present for the extension to be granted.
The bottom line: If you are the opposing party, you have to assume that there are no time extensions. This way, you will strive for complete and correct opposition documents.
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