IPA trademark 3.-cooling-off-period — IP Australia Trade Marks Manual of Practice and Procedure – Part 51.3. Cooling-Off Period

Trade Marks Act 1995 Trade Marks Regulations 1995 A cooling-off period temporarily suspends the opposition proceedings. The purpose of a cooling-off period is to facilitate negotiations between parties during an opposition. 3.1 Requesting a cooling-off period A cooling-off period may be requested at any time after a statement of grounds and particulars has been filed but before the Registrar has made a decision on the opposition or dismissed the opposition (regs 5.16(1), 9.19(1), 17A.34L(1), 17A.48U(1)). Both parties must sign the request for a cooling-off period. There is no fee for requesting a cooling-off period. A cooling-off period must be allowed if the Registrar is satisfied that both parties to the opposition agree to the cooling-off period (regs 5.16(2), 9.19(2), 17A.34L(2), 17A.48U(2)). 3.2 Length of a cooling-off period Only one cooling-off period is allowed in an opposition proceeding (regs 5.16(4), 9.19(4), 17A.34L(4), 17A.48U(4)). The cooling-off period is initially granted for six months (regs 5.16(2), 9.19(2), 17A.34L(2), 17A.48U(2)). The Registrar must extend the cooling-off period for a further 6 months if: a request to extend the cooling-off period is made before the end of the initial six months; and the Registrar is satisfied that both parties agree to the extension (regs 5.16(3), 9.19(3), 17A.34L(3), 17A.48U(3)). A cooling-off period is for a maximum of 12 months. The Registrar cannot further extend a cooling-off period. 3.3 End of a cooling-off period A cooling-off period will be discontinued early on the request of either party (regs 5.16(5), 9.19(5), 17A.34L(5), 17A.48U(5)). A cooling-off period cannot be recommenced once it is discontinued. When the cooling-off period ends, either by discontinuation or expiry, the opposition resumes and the relevant stage of the proceedings restarts on the day after the cooling-off ended (regs 5.16(7), 9.19(7), 17A.34L(7), 17A.48U(7)). For example, if the cooling-off period began during the evidence in support stage, the opponent would have 3 months from the day after the cooling-off period ended to file evidence in support.