IP Australia are seeking feedback on whether to change the current prosecution system for trade marks, from a 15-month acceptance deadline with unlimited responses in that time, to shorter 2-month response deadlines, capped at 3 iterations.
Since I have used the current prosecution system for 20 years, and see a number of advantages, I have voted against the change. The 15-month acceptance deadline can be really helpful where:
1) your client is trying to accrue use to get over a s 41(4) objection;
2) one or more of the registered citations is set to lapse in that 15-month period; and
3) smaller clients, who have just incurred the expense of filing, are able to save up the money to respond to the exam report.
That said, the downside of a 15-month acceptance deadline is that pending applications that clearly have no prospect of success can sit there for 15 months, blocking your client’s application until they finally lapse.
This issue is even more accentuated for some marks. I will not identify them, but I will give a few examples, listing their priority dates (PD) and dates they were entered in the register (RD), so you can see how long they sat in prosecution until they were eventually registered:
– 16 September 2011 (PD) to 8 July 2025 (RD): totalling 14 years
– 1 June 2012 (PD) to 16 September 2024 (RD): totalling 12 years
– 24 April 2013 (PD) to 29 October 2024 (RD): totalling 11 years
– 4 May 2015 (PD) to 8 August 2025 (RD): totalling 10 years
These marks were not opposed. That is, registration was not delayed by any opposition process. The time taken was simply due to prosecution.
There are hundreds, if not thousands, of marks like this on the register.
While these marks proceeded to registration in the end, many more like them have lapsed after 10+ years. That is, the applicant ultimately did not establish that they had the right to the mark, but they still managed to sit on the register blocking subsequent (potentially rightful) applicants for 10+ years until they lapsed. This is the entire length of a standard trade mark registration period of 10 years.
And for the ones that are registered after 10+ years, some of them are not even in use. But, the Act only permits removal for non-use 3 years after the date the mark is entered into the register. So, subsequent applicants have to wait an additional 3 years to obtain removal of a mark for non-use, after already waiting 10+ years for the mark to be registered in the first place.
This is problematic, particularly where it has been a longstanding objective to avoid clogging of the register. (The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill of 2018 aimed “to help address concerns that there are many unused trade marks on the Register”.)
Allowing 10+ years for prosecution does bode for some change at IP Australia. Even I agree to that!
Trade mark experts in Australian and international trade mark matters