Questions to Ask a Lawyer About Trade Mark Opposition
George Raptis
As soon as IP Australia advertises a trade mark application as accepted, you have two months to decide whether to oppose the application. You can oppose a trade mark application for several reasons, whether because the application is for a trade mark similar to your registered trade mark, or your trade mark that has already acquired a reputation in your industry. In any event, before you file your notice of intention to oppose a trade mark application with IP Australia, you should ask a lawyer the following questions about trade mark opposition.
What Are The Likely Outcomes of the Opposition?
Before you file a notice intention to impose, it is important to remain realistic about the prospects of success in the opposition. After all, trade mark opposition involves additional burdens on your time and money. If you are unsuccessful, costs may be awarded against you. For this reason, it is important to ensure that you are aware of the grounds upon which IP Australia will assess the opposition.
A successful opposition can result in IP Australia deciding to:
• refuse to register the trade mark; or
• register the trade mark with conditions or limitations.
Although a lawyer cannot guarantee what the Registrar will decide, an experienced trade mark lawyer can advise you on the strength of your opposition. More specifically, an experienced lawyer can determine whether you have relevant grounds to oppose a trade mark application.
Grounds for Opposition
Some of the grounds for trade mark opposition specified in the Trade Marks Act have been summarised for you below.
| Ground | Section | Explanation |
| The application is likely to conflict with your trade mark since it is for a substantially identical or deceptively similar trade mark. | 44 | Put simply, trade marks must be capable of distinguishing goods and services. Consequently, if the trade mark is likely to deceive consumers or is identical to your trade mark, it will not have a distinguishable quality. |
| You have used the same or similar trade mark at an earlier time. | 58/58A | If you have used the same or similar trade mark as an unregistered trade mark at an earlier time than the other party, you may have grounds to oppose the application. |
| The trade mark is similar to a trade mark that has acquired a reputation in Australia. | 60 | If your registered or unregistered trade mark has acquired a reputation before the other party applies, this is a ground to oppose the application. |
| The applicant does not intend to use the trade mark. | 59 | If the applicant has applied for a trade mark that they do not intend on using, this is a ground to oppose the application. |
| The trade mark contains a false geographical indication. | 61 | If the trade mark application falsely conveys an impression that the goods or services originate from a particular region, this is a ground to oppose the application. |
What is The Process of Trade Mark Opposition?
Trade mark opposition involves quite a few steps. Each of these steps is triggered by different time periods that can affect the outcome of the opposition if missed. For example, suppose you fail to submit evidence supporting your opposition within the three month period allocated. In that case, your opposition may be decided without you putting your best case forward. To avoid this, a lawyer can provide you with a clear outline that tailors the process of trade mark opposition to your specific circumstances. Doing so will ensure that you are prepared for each opposition stage.
General Outline
To give you a better understanding of trade mark opposition proceedings more broadly, below is a general outline of the processes involved.
- Within two months of IP Australia advertising an accepted application, you must file your notice of intention to oppose the application and pay the relevant official fee.
- Within one month of filing your notice, you must submit your statement of grounds and particulars.
- The trade mark applicant then has one month to file a notice of intention to defend their application. This will trigger a series of evidentiary process, where you submit evidence in:
- support: within three months, you must submit evidence that supports your grounds for opposition.
- answer: once the opponent receives your evidence in support, they have three months to submit evidence in answer to your opposition.
- reply: upon receiving evidence in answer, you have two months to submit evidence in reply
- Once both parties have communicated all evidence, the opposition proceedings can move to the hearing stage. This is where IP Australia will look at the arguments presented by you and the applicant. On this basis, they will make their final decision.
Time Extensions
If you submit evidence late, you may be able to apply for a time extension. However, IP Australia will only grant time extensions if there has been:
- a genuine error or omission by you or your agent (a lawyer acting on your behalf); or
- circumstances beyond your control that prevented you from submitting evidence on time.
In any event, an experienced lawyer can help you draft and file an application for an extension of time extension if necessary.
Key Takeaways
Trade mark opposition is the formal process of objecting to a trade mark application. A successful opposition can result in IP Australia deciding to refuse to register the trade mark. They may also register the trade mark with certain limitations. If you need help opposing a trade mark application, contact our experienced trade mark lawyers on 1300 657 423.
Frequently Asked Questions
To obtain a registered trade mark, you must apply through IP Australia. If IP Australia approves your application, you enjoy substantial IP protection for 10 years from the filing date. On the other hand, an unregistered trade mark can exist without registration if it has gained a sufficient reputation in the market. Nevertheless, if a trade mark dispute arose, you would have to prove your rights to the unregistered mark.
Currently, you must pay $250 to IP Australia when filing a notice of intention to oppose a trade mark application.