We recently spoke with Blake Knowles, principal partner at Spruson & Ferguson, to discuss how COVID-19 has impacted Australia trademark opposition and cancellation rules and procedures.
1. Thank you for your time, Blake. How has the COVID-19 pandemic impacted IP Australia’s policies and procedures regarding trademark oppositions, cancellations, and invalidations?
IP Australia has facilitated remote working for some time now, and is well placed to continue operations during the current pandemic. IP Australia has indicated it will consider COVID-19 related disruptions when considering any request for an extension of deadlines (provided that such deadlines can be extended under Australian law). However, face to face hearings will not be conducted for the foreseeable future. This should not cause a major disruption as many hearings are now heard by telephone or video conference, or on the basis of written submissions only. Certain actions involving Plant Breeders Rights have also been suspended, such as submission of plant specimens to the Australian Cultivar Registration Authority, and examination of field trials that involve domestic flights or overnight stays. For further information, see:
2. Have you seen any changes in trademark enforcement activities in Australia over the past month due to COVID-19?
There has been no noticeable change at this stage with regards to Australia trademark opposition and enforcement activities. However, it is expected that some clients will defer taking action in relation to non-critical matters given the current health and economic situation. Australian trade mark filings have dropped through January-March relative to previous years by approximately 17% (Jan-March 2019 – 17,204 filings, Jan-March 2020 – 14,293 filings).
3. When faced with COVID-19 business uncertainties, what can we as members of the international trademark community be doing to keep trademark enforcement efforts top of mind for our clients who wish to do business in Australia and elsewhere?
Firms should continue to keep clients abreast of developments in trademark law and recent trademark enforcement decisions, including by regular circulars and updates.
The current economic situation may encourage a higher rate of trademark infringement, as potential infringers assume that many companies will tighten their IP enforcement of their IP budget. It is important that such infringers be detected and dealt with early, before gaining any momentum in the marketplace.
Editor’s Note: Participating authors of COVID-19 global trademark litigation updates are from a wide variety of firms, many of whom we know and others by reputation. If you would like to contribute insight on trademark opposition developments in your own country, please contact us.