{"id":7281,"date":"2021-11-19T14:10:25","date_gmt":"2021-11-19T04:10:25","guid":{"rendered":"https:\/\/trademark-registration.com.au\/?p=7281"},"modified":"2021-11-19T14:10:26","modified_gmt":"2021-11-19T04:10:26","slug":"questions-ask-lawyer-defending-trade-mark-opposition","status":"publish","type":"post","link":"https:\/\/trademark-registration.com.au\/protection\/questions-ask-lawyer-defending-trade-mark-opposition\/","title":{"rendered":"Questions to Ask a Lawyer Before Defending a Trade Mark Opposition"},"content":{"rendered":"\n

When you are in the middle of trade mark registration, and you think everything is going smoothly, you might be surprised to receive an opposition to your trade mark application. But before you start defending your application, you should get the advice of a trade mark lawyer<\/a>. An expert trade mark lawyer can advise you on the strength of your defence and help file your claim. This article provides some key questions to ask your lawyer when defending a trade mark opposition.<\/p>\n\n\n\n

What Are the Likely Outcomes of a Defence?<\/h2>\n\n\n\n

This is probably the most important question to you. Although a lawyer cannot be certain what IP Australia will decide, they can provide you with a realistic<\/strong> indication of the likely outcomes of your defence.<\/p>\n\n\n\n

A lawyer will consider the strength of your defence when providing their advice. If they think that you have solid grounds for challenging the opposition, they will advise you accordingly. They will also help you compile evidence that appropriately supports your defence. For example, if a third party is opposing your registered trade mark application on the basis that it is substantially identical to an existing trade mark, you would likely need to provide evidence that proves you applied to register your trade mark first. Likewise, if there is not enough evidence to support your defence, your lawyer will advise you accordingly. Whilst you risk losing your registered trade mark, it is important to be realistic about opposition proceedings. This can save you both time and further costs involved if you are likely to lose out in opposition proceedings.<\/p>\n\n\n\n

When Can I File a Notice of Intention to Defend?<\/h2>\n\n\n\n

Opposition proceedings can quickly become complex, given all the different requirements and deadlines involved. These deadlines are crucial, especially since missing one can be fatal to the registration of your trade mark.<\/p>\n\n\n\n

Most importantly, a lawyer can alert you to the timeframe in which you must file your notice of intention to defend. For example, after you receive the opponent’s statement of grounds and particulars, you will have <\/strong>one month <\/strong>to file your notice of intention to defend. If you do not file your defence within a month, your trade mark application will lapse and become invalid.<\/p><\/blockquote>\n\n\n\n

If you miss this deadline, a lawyer can also help you file for an extension of time<\/a> with IP Australia if you can prove that you had an acceptable reason for doing so. Under the Trade Marks Act<\/em>, the only acceptable reasons to grant an extension of time are if:<\/p>\n\n\n\n