A significant new directive has been issued by IP Australia which has a significant effect on how evidence will be managed in trade mark opposition proceedings. The Direction appears to apply to the preparation of evidence where the Notice of Intention to Defend has been filed after 1 July 2017.
A breakdown of the change is below:
Evidence under 50 pages: The new direction only applies to evidence which is more than 50 pages in TOTAL (that is the declaration PLUS exhibits). If you are able to get your evidence below that threshold, then the new Direction does not have any impact.
Evidence over 50 pages: If the evidence submitted by a party is over 50 pages in total (including exhibits), then the following directions apply:
a. each document must be clearly paginated and bookmarked in a way that sufficiently identifies the evidence that the party is relying on.
b. a summary of the evidence referring back to the grounds set out in the filed Statement of Grounds and Particulars and the relevant page number within the documents filed, must be provided with the party’s written summary of submissions to be relied on at the hearing.
What This Means: The new direction has clearly been made with the intention to make it easier for parties to be able to identify the key relevant evidence in opposition proceedings and make the conduct of trade mark opposition hearings more streamlined and efficient. It also provides some incentive for parties (in particular, opponents) not to go overboard with their evidence and ensure that the material submitted is relevant to the proceedings.
A common tactic used especially by larger organisations in trade mark opposition proceedings is what I like to call the “shock and awe” method, wherein the Opponent will produce volumes and volumes of (largely irrelevant) evidence in the hope that the trade mark applicant will become overwhelmed and give up the fight. Adding this extra procedural step both provides some incentive for parties to produce more relevant and succinct evidence, but also helps to remove the intimidation factor that voluminous evidence can have on applicants by forcing opponents to identify the relevance of their own evidence.
It will be interesting to see how the new direction plays out in practice and whether it will indeed have the desired impact.