Benefits of Working With a Lawyer If Somebody Opposes Your Trade Mark
You might be surprised one day to receive in your e-services inbox a notice of opposition to your trade mark application. Whilst opposition proceedings are fairly common, they can quickly become complex given the different deadlines and evidentiary requirements at each stage of the process if you choose to defend the opposition. This article outlines:
- the basics of trade mark opposition; and
- three benefits of working with a lawyer if somebody opposes your trade mark.
What Is Trade Mark Opposition?
Suppose you have undergone trade mark registration and IP Australia has accepted your application. In that case, there is a two month period in which any third party can oppose your trade mark application. Put simply, trade mark opposition is a formal process where someone objects to your application for trade mark registration. This can result in IP Australia removing your trade mark from the Registry. If someone opposes your trade mark registration, they must rely on a legal ground to justify their opposition. These grounds are found in the Trade Marks Act and allow for opposition proceedings on the basis that:
- you are not the owner of the trade mark you applied for;
- a substantially identical or deceptively similar trade mark already exists;
- you do not intend to use your registered trade mark;
- an existing trade mark, whether it is registered or unregistered, has acquired a reputation in the market; or
- your trade mark contains a false indication of its region of origin.
The person opposing your registration must support their ground with particulars about your trade mark application. Suppose you choose to defend the trade mark opposition within one month of receiving the statement of grounds. In that case, this will initiate evidentiary proceedings where you will exchange evidence back and forth between you and the opponent.
1. Meeting Deadlines
Trade mark opposition proceedings are fraught with different deadlines. You must reply on time to certain documents filed by the opponent. If you miss a deadline, you run the risk of losing your ability to defend the opposition, and, as a result of this, IP Australia may remove your trade mark registration. Whilst you do have an opportunity to apply for time extensions in the instance where you miss a deadline, IP Australia may not accept your application for a time extension.
For this reason, you should work with a lawyer during opposition proceedings. A lawyer who has experience with trade mark opposition proceedings will guide you through the different stages of the opposition and ensure that you meet the requisite deadlines. In the instance where you miss a deadline as a result of some error or event that was beyond your control, a trade mark lawyer can also help you apply for an extension and submit the correct documents for IP Australia’s review.
2. Meeting Evidentiary Requirements
If you decide to defend the opposition, you must give evidence in answer three months after receiving the opponent’s evidence in support. The evidence you will be required to submit will depend on what the opponent has submitted and what legal ground they have relied upon to oppose your application. An expert trade mark lawyer can assist with compiling evidence to strengthen your defence. A lawyer can also ensure that your evidence is, in fact, ‘in answer’ to the evidence that the opponent has brought forward, giving you greater peace of mind that your submissions sufficiently defend your application.
3. Compiling Submissions for Hearing
Once both parties have submitted their evidence to IP Australia, the opposition proceedings will progress into the hearing stages. Whilst this is not the place to begin submitting new evidence, it does require certain legal submissions. An expert lawyer can compile submissions for your hearing before IP Australia and ensure that your defence is sound. Without legal advice, you run the risk of having insufficient submissions, which may be easily countered by the person opposing your trade mark application.
Working with a lawyer if somebody opposes your trade mark can give you greater peace of mind. Not only can a lawyer advise you on whether the application is worth defending. But a lawyer with experience in trade mark opposition can also help:
- ensure that you meet the strict deadlines during trade mark opposition proceedings;
- compile evidence regarding your trade mark that actually responds to the evidence brought forward by the opponent; and
- draft submissions for use during the hearing stage to ensure that your defence is sufficiently strong and sound.
Frequently Asked Questions
Under the Trade Marks Act, you can appeal IP Australia’s decision in the Federal Courts. However, you should seek legal advice before deciding to appeal the decision to determine your claim’s strength.
You can request a cooling-off period to negotiate with the opponent before IP Australia makes their decision. However, this depends on whether the opponent is willing to reach an agreement with you alone.