Tips for Opposing a Trade Mark Amendment Application
George Raptis
From the moment IP Australia advertises they have accepted a trade mark amendment application on the Registry, you have the opportunity to oppose the amendment. Where a trade mark opposition is successful, this can result in IP Australia removing the application from the Registry. This article outlines three useful tips to help you oppose a trade mark amendment application.
Tip #1: Know Your Grounds for Opposition
When you oppose a trade mark application, you must have a good reason to do so. Better yet, these reasons must be one of the grounds listed in the Trade Marks Act. Before you file a notice of your intention to oppose a trade mark amendment application, familiarise yourself with the different grounds for opposition. Doing so will ensure that you pick the best-suited ground that fits your particular case.
Grounds for Opposition
|
Ground |
Section |
Explanation |
|
Amendment is incapable of distinguishing goods or services |
41 |
Where a generalised trade mark would be used by others in the market. |
|
Amendment is likely to conflict with a substantially identical or deceptively similar trade mark |
44 |
Trade marks must be distinctive. So, trade marks that may deceive consumers or are identical are not distinctive. |
|
You have used the same or similar mark at an earlier time |
58A |
Where you have used the same or similar trade mark at an earlier time. |
|
Applicant is not the owner of the trade mark |
58 |
Where you have used the trade mark before the filing date of the amendment application. |
|
Trade mark is similar to a mark that has a reputation in Australia |
60 |
Your registered or unregistered trade mark has a reputation before the application is made. |
|
Application is scandalous or contrary to the law |
42 |
Where the amendment possesses any reasonably offensive signage or material that is against the law. |
|
Application is likely to deceive or cause confusion |
43 |
This includes amendments that are likely to deceive consumers. |
|
Applicant does not intend to use the trade mark |
53 |
If the applicant has applied for the amendment without the intention of using the trade mark. |
|
Amendment application was made in bad faith |
62A |
Where the applicant filing the amendment has no intention of using the trade mark. Rather, they want to prevent others from filing a similar trade mark application. |
|
Application contains a false geographical indication |
61 |
Amendments that claim the good or service originates from a particular region, which is false. |
|
Application contains a prohibited sign |
39 |
Prohibited signs include national flags, foreign national symbols and signs to identify intergovernmental organisations. |
|
Amendment application is defective |
62 |
Where the application is defective or the applicant made a false representation. |
Tip #2: Have Your Evidence On-Hand
Once you have chosen your ground for opposition, be prepared to support your opposition with evidence. The process of trade mark opposition generally runs as follows:
- You have two months to oppose the amendment from the time IP Australia advertises the amendment application as accepted. You must file a notice of intention to oppose within this time.
- Afterwards, you have one month from the date you submit your notice to file your statement. This is where you must specify what ground you are relying upon to oppose the application. You should also provide details of the opposition.
- Within one month of receiving your statement, the applicant can choose to defend the opposition.
- Next, if the applicant defends the opposition, you have three months to prepare and submit evidence to support your opposition.
- Once you submit evidence, the applicant has three months to submit evidence in answer.
- Afterwards, you have two months to submit further evidence in reply.
- Once all the evidence has been compiled, your case may go to the hearing stage where IP Australia will consider both sides. It is at this final stage where they will arrive at a decision.
As you can see, there are many requirements of evidence you will need to provide when opposing a trade mark amendment application. Before you even decide to do so, you should consider whether you have enough evidence to support your case.
Tip #3: Seek Legal Advice Early
Trade mark opposition can quickly become a lengthy process where you must meet different deadlines and provide evidence at various stages. You should also note that opposition proceedings launch legal processes. So, once they begin, the unsuccessful party may need to pay certain costs to the other party.
For this reason, you should seek legal advice early. Indeed, an expert trade mark lawyer can help you make a better judgment about the likely outcome of the opposition proceedings. Ultimately, they will help you decide whether the opposition is worth pursuing.
Key Takeaways
If you are considering opposing a trade mark amendment application, you should:
- familiarise yourself with the grounds for opposition under the Trade Marks Act;
- be prepared to support your opposition with evidence; and
- seek legal advice to determine your chances of success.
For further help with opposing a trade mark amendment application, contact our experienced IP lawyers on 1300 657 423.
Frequently Asked Questions
Anyone can file a notice of their intention to oppose. However, it would be wise to seek legal advice before doing so to determine whether you have a good reason to support your opposition.
It generally costs $250 to file a notice of intention to oppose. You can search online, for a full cost breakdown of fees involved in trade mark opposition.