What to Consider When Defending a Trade Mark Opposition
George Raptis
Before you decide to defend an opposition to your trade mark application, you should consider the requirements involved in such proceedings. By thinking ahead, you can make a better-informed decision as to whether you wish to proceed with your defence. To help you reach your decision, this article outlines the basics of trade mark opposition and offers three points you should consider when defending an opposition.
What Are Opposition Proceedings?
Trade mark opposition is where a person formally opposes the registration of your trade mark application. Within two months of IP Australia advertising your application as accepted, anyone can oppose the trade mark application. You can file oppositions in response to applications for new trade marks, as well as applications for amendments to existing trade marks, and applications for time extensions during opposition proceedings themselves.
You must make an opposition on a particular ground listed in the Trade Marks Act. There are several grounds on which someone can oppose your application. These include if the application:
- involves a trade mark substantially identical or deceptively similar to a registered trade mark that already exists;
- is being made in bad faith, or there is no intention use the registered trade mark;
- is applying for an existing trade mark, which has acquired a reputation in the market; or
- contains a false indication that the trade mark originates from a region different to its actual place of origin.
After receiving the opponent’s statement of grounds and particulars, you will know which ground they are relying upon to oppose your application. From the date you receive the statement, you have one month to decide whether to defend the opposition. Before you decide to file your notice of intention to defend the opposition, you should consider the following three points.
1. Do You Have Sufficient Evidence?
Oppositions are decided on fact and law, meaning you must be prepared to defend the opposition with sufficient evidence. Once you file your notice of intention to defend, this will initiate a series of evidentiary proceedings. The process generally unfolds as detailed below.
- The opponent has a three month period to submit evidence in support of their opposition from the date you file your notice of intention to defend.
- Upon receiving the evidence in support, you have three months to submit evidence in response.
- Once you have submitted evidence in response, the opponent has two months to submit evidence in reply.
- Once all the evidence has been compiled, the opposition proceedings will move to the hearing stage where IP Australia will assess both sides of the case and arrive at their final decision.
If you have insufficient evidence to support your defence, you might reconsider whether defending your application is worthwhile.
After all, opposition proceedings are a legal process that, once started, can make the unsuccessful party liable for costs awarded to the successful party. For this reason, you should ensure your application is defensible.
2. What Are The Likely Outcomes?
It is important you remain realistic about opposition proceedings. If you have strong grounds to defend your application, and your trade mark is vital to the functioning of your business, it would be worthwhile defending the opposition. A successful defence would result in your application remaining accepted on the Registry.
However, if you seek to defend your application simply on principle, it could lead to unwanted costs and lengthy proceedings. It is important also to note that the decision IP Australia arrives at can be appealed in the Federal Court of the Federal Circuit Court. Where your opponent has deep pockets, there is a chance that they could prosecute. Unlike opposition proceedings, you cannot easily withdraw from an appeal in the Federal Court.
As a general rule of thumb, defending trade mark opposition should only be pursued as far as it is necessary to protect your exclusive rights.
3. Have You Sought Legal Advice?
Perhaps the most important point to consider is whether you have sought legal advice before deciding to defend an opposition. An expert trade mark lawyer can help weigh up the pros and cons of pursuing a defence. They can therefore help inform your decision as to whether or not to pursue the defence.
If you decide to defend the opposition, a lawyer can also help guide you through opposition proceedings by ensuring that you:
- meet the prescribed deadlines;
- compile sufficient evidence that support your defence; and
- compile any oral submissions that are necessary at the hearing stage.
Key Takeaways
Before you decide to defend opposition to your trade mark application, you should consider whether you have sufficient evidence to support your opposition. You should also assess the likely outcomes of a successful or an unsuccessful defence. You should always seek legal advice early.
If you need further help defending an opposition, our experienced IP lawyers can assist on 1300 657 423.
Frequently Asked Questions
This is a notice that an opponent files with IP Australia to indicate their intention to oppose a trade mark application formally. The opponent must then support their notice with a statement of grounds and particulars which details the reasons for their opposition.
Either party may have the opportunity to appeal IP Australia’s decision to the Federal Courts.