{"id":5246,"date":"2021-06-29T13:43:33","date_gmt":"2021-06-29T03:43:33","guid":{"rendered":"https:\/\/tm.legalvision.com.au\/?p=5246"},"modified":"2021-08-02T17:17:05","modified_gmt":"2021-08-02T07:17:05","slug":"opposing-trade-mark","status":"publish","type":"post","link":"https:\/\/trademark-registration.com.au\/opposition\/opposing-trade-mark\/","title":{"rendered":"Opposing a Trade Mark"},"content":{"rendered":"\n

Many trade mark owners are unaware that they can oppose trade mark applications listed on the Trade Mark Search<\/a>. You have a two-month window from the date a trade mark is advertised to file a notice of intention to oppose the trade mark application. This article outlines the reasons you can rely on when opposing a trade mark application, and explains the evidence required in the process of opposing an application. <\/p>\n\n\n\n

Reasons for Opposing a Trade Mark Application\u00a0<\/h2>\n\n\n\n

The most common reasons for opposing a trade mark application, otherwise referred to as the \u2018grounds for opposition\u2019, are as follows.\u00a0<\/p>\n\n\n\n

1. The Applicant Is Not the Owner of the Trade Mark<\/h3>\n\n\n\n

If you know that the applicant attempting to register the trade mark is not the actual owner of the trade mark<\/a>, this is one ground to oppose the application. <\/p>\n\n\n\n

2. A Similar Trade Mark Already Exists  <\/h3>\n\n\n\n

A common ground to oppose an application is that the trade mark in question is substantially identical or deceptively similar to an already registered trade mark.<\/p>\n\n\n\n

You should note that even if you own a registered trade mark that is similar to the trade mark you intend to oppose, you should assess whether the goods or services you provide under your trade mark are similar to those in the other application. Some trade marks can coexist with another identical trade mark, as long as the goods and services are substantially different enough to prevent confusion in the marketplace. For example, \u201cVENOM\u201d for clothing will likely never be confused with \u201cVENOM\u201d for software development services.<\/p>\n\n\n\n

3. The Applicant Does Not Intend to Use the Trade Mark<\/h3>\n\n\n\n

If you are aware that the applicant does not intend to use the trade mark, this is another ground on which you can oppose their application. This typically arises when someone applies to register a trade mark in bad faith, with only the intention of excluding other businesses rather than using the trade mark themselves.<\/p>\n\n\n\n

4. An Existing Trade Mark Has Acquired a Reputation\u00a0<\/h3>\n\n\n\n

In the instance where your existing trade mark, whether it be registered or not, has acquired a reputation in its industry, you can oppose an application for a similar trade mark due to the potential to deceive or confuse consumers. You must be able to prove that you:<\/p>\n\n\n\n