4 Tips for Opposing an Accepted Trade Mark
Once IP Australia has advertised a trade mark application as accepted, there is a two-month window in which any third party can oppose the application. While the opposition process is relatively straightforward, it can quickly become a long and complex process if deadlines and evidentiary requirements are not met. This article outlines four tips you should consider when opposing an accepted trade mark application.
1. Know the Grounds for Opposition
There are numerous grounds for opposing an accepted trade mark application. You can think of these grounds as reasons you can rely upon to support your opposition. Some of the more common grounds for opposing an accepted trade mark application are as follows:
- the person who applied for the accepted trade mark is not the owner of the trade mark;
- an accepted trade mark is similar to your trade mark and applies to similar goods or services, such that it is likely to deceive or confuse consumers;
- the applicant does not intend to use the accepted trade mark;
- an existing trade mark that has acquired a reputation is likely to be confused with the newly accepted trade mark; and
- the accepted trade mark claims to originate from a geographical region that is different from its true origin.
Whilst you can use any of the above grounds to support your opposition, you must also be prepared to support your claim with evidence.
2. Familiarise Yourself With the Process
The process of trade mark opposition begins with you filing a notice of intention to oppose via IP Australia. This is where you must outline which trade mark application you wish to oppose and the type of opposition you are seeking, such as the removal of the accepted trade mark application. You must also pay a Government fee of $250 upon filing the notice.
Once you have given notice, you must then file a statement of grounds and particulars. This is where you must outline the legal ground you rely upon to oppose the trade mark application. IP Australia will then notify the owner of the accepted trade mark of your opposition. The owner then has the opportunity to defend your opposition by filing a notice of intention to defend. This will then initiate an evidentiary process in which you must submit evidence in support of your claim. The trade mark owner can then respond by submitting evidence in answer, to which you then have one final opportunity to submit evidence in reply.
Once all the evidence stages are complete, your opposition will progress to the hearing stage, and IP Australia will make its final decision based on the evidence filed.
3. Get Your Timing Right
As with many things in legal proceedings, timing is everything. There are numerous deadlines you must meet during opposition proceedings to ensure that your opposition remains live.
Firstly, you have a two-month window beginning from the date IP Australia advertises the trade mark application as accepted to file your notice of intention to oppose. Once you file your notice, you have one month to submit a statement of grounds and particulars. A failure to submit the statement will result in your opposition no longer proceeding.
From the date on which the trade mark owner receives your statement of grounds, they have one month to defend the opposition. If the trade mark owner does not defend your opposition, their application will lapse. Once the other party has submitted a notice of intention to defend, you have three months to collate evidence supporting your opposition. Likewise, once you have submitted this evidence in support, the trade mark owner has three months to submit evidence in answer. Once you receive this evidence in answer, you have two months to submit evidence in reply.
If you fail to meet a deadline for any reason, there is the possibility of applying for a time extension with IP Australia. To do so, you must show that:
- you have made an effort to comply with the deadlines despite not being able to meet the deadlines; or
- there have been some exceptional circumstances that have prevented you from meeting the deadline.
Applying for a time extension will attract a fee, and another party can object to it. For this reason, you should aim to meet all the deadlines during the proceedings.
4. Seek Legal Advice Early
Opposing an accepted trade mark application can become a lengthy process with various evidentiary requirements at each stage. For this reason, it would be wise first to seek legal advice early to ensure that you have a sufficient basis for relying on your ground for opposition. Then, if you decide to pursue the opposition, an experienced lawyer can help guide you through opposition proceedings and the different requirements at each stage.
Before you decide to oppose an accepted trade mark application, you should:
- identify whether you have a legal ground upon which you can oppose the application;
- familiarise yourself with the process of opposition;
- note the various deadlines in opposition proceedings; and
- seek legal advice early.
Frequently Asked Questions
You can appeal IP Australia’s decision in the Federal Courts. Before you decide to appeal, however, you should weigh up the benefits and costs of initiating Court proceedings. It would also be wise to seek legal advice to determine the strength of your claim.
During opposition proceedings, you can request a cooling-off period to negotiate with the trade mark owner and arrive at your own decision. However, this would depend on whether the trade mark owner is willing to negotiate and reach a mutual agreement.