How To Avoid Trade Mark Opposition

George Raptis

• 13 August 2021
• 24 August 2021
• 6 min read

Trade mark oppositions can arise at different stages of the trade mark application process. From the moment IP Australia accepts your trade mark application, to any amendments you might make to your application thereafter, your application is vulnerable to opposition. This article outlines the basics of trade mark opposition. It also provides some common mistakes you should avoid when you apply for a trade mark to avoid opposition.

Trade Mark Opposition Basics

Put simply, trade mark opposition is when someone formally opposes the registration of your trade mark application. Opposition proceedings begin when any third party files a notice of intention to oppose your application. This occurs via IP Australia within a two month period of IP Australia advertising your application as having been accepted. The person who initiates opposition proceedings will have to support their opposition by submitting a statement of grounds and particulars. These must specify why they oppose your application. 

If you decide to defend the opposition, this will initiate a series of evidentiary requirements. During this process, you and the opposer will have to submit evidence supporting your competing claims. Once you have collated all the evidence, the opposition will move to the hearing stage, where IP Australia will arrive at its final decision. 

Whilst the opposing party must submit reasons for opposing your application, they cannot just choose a reason they see fit. Instead, there are only certain legal grounds they can rely on to support their opposition. If you take the time to familiarise yourself with some of the common grounds on which you can oppose a trade mark application, you will know what traps to avoid when applying for a trade mark. 

Avoid Signs That Are Incapable of Distinguishing Your Goods or Services 

One sole purpose of a trade mark is to distinguish your goods or services from others in the market. If your trade mark fails to do just that, it can be readily opposed. To prove that a trade mark is incapable of distinguishing goods or services, the opponent will typically have to justify why other traders in the market would need to use the trade mark in the course of their business. 

For example, ordinary descriptions of fruit and vegetables like the word ‘fresh’ may not be capable of distinguishing your specific goods since any producer can generally use them. To avoid choosing signs that are incapable of distinguishing your goods or services, avoid generic signs or descriptions. Instead, think of more creative ways to describe your brand. The more unique your trade mark, the more likely it will resonate with the consumer. 

Avoid Choosing An Identical Or Similar Mark 

Suppose you choose to register a trade mark that is substantially identical or deceptively similar to a trade mark that is already in existence. In that case, the existing trade mark owner can typically oppose it themselves. Even if you successfully register an identical or similar trade mark, you may be committing trade mark infringement if you use the mark during business. 

In a similar vein, trade marks that might confuse or deceive consumers can also be opposed. Again, the confusion may arise because of the nature of the goods or services, their quality or representations regarding the geographical origin of the good. 

To avoid choosing an identical or deceptively similar trade mark, you should conduct a comprehensive search of the Trade Mark Register. On the Register, you can enter your intended trade mark into the search bar, either in writing or by uploading a photo, to detect any existing trade marks that could be similar or identical to your own.

Avoid Prohibited Signs and Scandalous Material

This may be an obvious reason for opposing a trade mark, but an application that uses a prohibited sign or contains scandalous material can be opposed under the Trade Marks Act. Signs that are prohibited from being used in a trade mark application include:

• most flags or seals that identify different countries or regions; 
• foreign national symbols; and 
• signs used to identify intergovernmental organisations. 

Whilst there is no strict definition of ‘scandalous material,’ reasonably offensive trade marks would be considered scandalous. This could include trade marks that contain:

• personal abuse; 
• racist, sexist or homophobic content; and
• threats of violence or terrorism. 

Under this opposition category, there are also trade marks that are contrary to law. For example, a trade mark that contravenes the Racial Discrimination Act 1975 because it discriminates between different races. 

To avoid opposition because you have included a prohibited sign or scandalous material in your application, you should only apply for trade marks that are in good taste. 

Avoid Applying For A Trade Mark You Will Not Use

After all the time and cost involved in applying for a trade mark, it would make sense that you would then go on to use your trade mark. However, some business owners tend to trade mark names or signs without the intention of using the mark. They may trade mark as a competitive tactic to ensure competing businesses’ cannot use the mark. You can oppose a trade mark on the basis that the applicant did not intend to use the mark from the date they filed their application. To avoid opposition on this ground, you should only apply for trade marks you intend to use. If you plan to register a trade mark now to use it in future business conduct, you should seek legal advice to minimise any chances of your application being opposed.

Key Takeaways 

There are many grounds on which your trade mark application can be opposed. To avoid opposition, you should be aware of the grounds of opposition when applying for your trade mark. Some of the grounds for opposition include trade marks that are: 

• incapable of distinguishing goods or services;
• substantially identical or deceptively similar to a trade mark already in existence;
• scandalous or include prohibited signs; and
• not intended to be used from their filing date. 

If you need further tips on how to avoid trade mark opposition, our experienced IP lawyers can assist. Call us on 1300 657 423. 

Frequently Asked Questions