How to Oppose a Conflicting Trade Mark
Having a registered trade mark gives you a number of rights, one of which is the right to oppose trade marks that infringe on yours. This means that monitoring for trade marks that are identical to or deceptively similar to yours is essential to utilising your trade mark rights.
What is a Conflicting Trade Mark?
A conflicting trade mark is a trade mark that is identical or deceptively similar to another trade mark. Conflicting trade marks can cause confusion about the origin of a trade mark, which can be deceptive to consumers. Therefore, you should oppose any trade marks that conflict with yours.
Once a trade mark application has been filed and the trade mark approved by IP Australia, trade marks are advertised in the Australian Official Journal of Trade Marks. You have two months from the date the conflicting trade mark has been advertised in this journal to make your opposition. Any third party is entitled to oppose a pending trade mark.
How Can I Oppose a Conflicting Trade Mark?
If you have identified a conflicting trade mark that is pending registration, you will need to file a ‘notice of intention to oppose’ and a ‘statement of grounds and particulars’. You can find information about these forms in the table below:
|Notice of intention to oppose||A notice of intention to oppose serves as evidence that you intend to oppose a trade mark.||$250|
|Statement of grounds and particulars||A statement of grounds and particulars outlines the grounds on which you are opposing the conflicting trade mark. You must file the statement of grounds and particulars within one month of providing a notice of intention to oppose.||N/A|
Extension of Time
Suppose you need time to file your notice of intention to oppose or to submit your statement of grounds and particulars. In that case, you may receive an extension of time under certain circumstances. These circumstances include if:
- there are circumstances beyond your control that mean you require more time;
- the other party has made an error; or
- IP Australia has made an error.
To apply for an extension of time, you will need to file the relevant form and pay a $250 fee.
What Happens if My Trade Mark is Opposed?
As a trade mark owner, you can oppose a trade mark. However, this goes both ways – your trade mark will be capable of being opposed as well. If someone opposes your trade mark registration, IP Australia will send you a copy of the relevant notice of intention to oppose and the statement of grounds and particulars.
After this, you will have one month to file a notice of intention to defend with IP Australia. If you do not file this notice, your trade mark application will lapse, and your application will cease to exist. However, if you do file a notice of intention to defend, you will need to provide evidence in response to the opposition you have received. Once you have provided the relevant evidence, IP Australia will decide whether or not they will register your trade mark.
Trade mark opposition is a critical element of being a trade mark owner. The key steps to opposing a trade mark include:
- notifying IP Australia that you intend to oppose a pending trade mark; and
- submitting the grounds and particulars you are relying on for the trade mark opposition.
While trade mark opposition is important, it is equally important to note that the process can be time-consuming and costly. If you are considering trade mark opposition, get in touch with our experienced trade mark lawyers. You can contact them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
Suppose someone has made a trade mark application that is pending on the register, and you have concerns that it is identical to or deceptively similar to your existing trade mark. In that case, you can make a formal trade mark opposition. However, first, you will have to file a notice of intention to oppose before submitting a statement of grounds and particulars outlining your concerns with the pending trade mark.
You can enforce your trade mark rights in several ways, with the most suitable option depending on your circumstances. For example, as well as making a formal opposition to a pending trade mark, you can also send a cease and desist letter or take the infringing trade mark to court.