What you need to know about trade mark oppositions

 

What is a Trade Mark Opposition?

A trade mark opposition is the formal process by which a third party objects to the registration of a trade mark in Australia.

Oppositions can be filed by any person who believes they will be adversely impacted or commercially damaged by the registration of a pending trade mark application.

 

Proceeding with an opposition: Why and How?

If you believe a pending trade mark resembles your own brand too closely, is confusingly similar, and covers the same or similar goods or services, then you may consider opposing that trade mark application.

 

The opposition process is time critical and follows a strict timeline of actions that must be performed to avoid the opposition being dismissed.

In Australia, you have 2 months from the date of the advertisement of acceptance to start the process. A Notice of Intention to Oppose needs to be filed. Once a person files a Notice of Intention to Oppose, they will then be considered the ‘Opponent’.

 

Within one month of filing the Notice of Intention to Oppose, the prospective Opponent must file a Statement of Grounds and Particulars with the Australian Trade Marks Office (IP Australia).

 

In essence, the purpose of the Statement of Grounds and Particulars is to outline the reasons why the Opponent believes the trade mark should not proceed to registration.

 

What are the grounds for trade mark opposition?

Your opposition must be based on at least one of the grounds set out in the Trade Marks Act 1995 (Cth). Some of the most common grounds for opposing a trade mark registration include (but are not limited to):

  • The trade mark is not capable of distinguishing the trade mark applicant’s goods and/or services from those of other traders;
  • The trade mark is similar to an earlier trade mark which acquired a reputation in Australia;
  • The trade mark applicant does not intend to use the trade mark;
  • The trade mark is substantially identical with and/or deceptively similar to an earlier trade mark.

 

As the Opponent, you must file Evidence-in-Support within three months of IP Australia forwarding the applicant’s Notice of Intention to Defend. Evidence-in-Support essentially provides information and evidence in the form of a declaration which supports the grounds on which registration of the trade mark is opposed.  The trade mark applicant will have an opportunity to respond by filing its own evidence.

 

Defending an opposition: Why and How?

If you are the owner of a trade mark and have applied to have it registered, then you know its value and you have a commercial interest in ensuring your brand is protected.

 

To respond to a trade mark opposition, you must file a Notice of Intention to Defend within one month of receiving the Statement of Grounds and Particulars with IP Australia.  Evidence stages will follow, wherein you’ll have an opportunity to provide your own material to dispute the Opponent’s assertions.

 

After all evidence is filed and exchanged, IP Australia will make a decision.  Each party nominates whether it will attend a hearing, or would instead prefer for the matter to be decided on the written record only.

 

Opposition proceedings heard before IP Australia may be appealed within 21 days of a decision being issued.

 

How can a Trade Marks Attorney help?

If your trade mark registration is opposed, it is highly recommended that you seek professional advice. Our Trade Marks Attorneys have in-depth knowledge of the stages of proceedings and can provide guidance to help you determine your options and successfully defend your registration.

 

Alternatively, if you are opposing a trade mark registration then our experienced Attorneys can help you reach a successful opposition by correctly preparing and filing evidence.

 

An Important Reminder

IP Australia will not notify you if a similar trade mark to your own brand is filed. It is your responsibility as a trade mark owner to monitor the market for potential infringement and act accordingly. Our Trade Marks Attorneys can assist you by carrying out a regular watching service with a view to taking action against any new trade mark applications of concern to you.

 

If you would like to commence a trade mark opposition or need assistance overcoming an opposition in Australia, New Zealand or internationally, please contact one of our Attorneys: [email protected] or [email protected]

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Flowchart outlining Australian Trade Mark Opposition process

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