Opposing a Trade Mark
Many trade mark owners are unaware that they can oppose trade mark applications listed on the Trade Mark Search. You have a two-month window from the date a trade mark is advertised to file a notice of intention to oppose the trade mark application. This article outlines the reasons you can rely on when opposing a trade mark application, and explains the evidence required in the process of opposing an application.
Reasons for Opposing a Trade Mark Application
The most common reasons for opposing a trade mark application, otherwise referred to as the ‘grounds for opposition’, are as follows.
1. The Applicant Is Not the Owner of the Trade Mark
If you know that the applicant attempting to register the trade mark is not the actual owner of the trade mark, this is one ground to oppose the application.
2. A Similar Trade Mark Already Exists
A common ground to oppose an application is that the trade mark in question is substantially identical or deceptively similar to an already registered trade mark.
You should note that even if you own a registered trade mark that is similar to the trade mark you intend to oppose, you should assess whether the goods or services you provide under your trade mark are similar to those in the other application. Some trade marks can coexist with another identical trade mark, as long as the goods and services are substantially different enough to prevent confusion in the marketplace. For example, “VENOM” for clothing will likely never be confused with “VENOM” for software development services.
3. The Applicant Does Not Intend to Use the Trade Mark
If you are aware that the applicant does not intend to use the trade mark, this is another ground on which you can oppose their application. This typically arises when someone applies to register a trade mark in bad faith, with only the intention of excluding other businesses rather than using the trade mark themselves.
4. An Existing Trade Mark Has Acquired a Reputation
In the instance where your existing trade mark, whether it be registered or not, has acquired a reputation in its industry, you can oppose an application for a similar trade mark due to the potential to deceive or confuse consumers. You must be able to prove that you:
- first used the trade mark in connection with similar goods or services before the applicant of the later trade mark; and
- have continuously used your trade mark in connection with similar goods or services since the trade mark’s first use.
Whether your existing trade mark has acquired a reputation will depend on evidence that shows that the mark has an enduring presence in the market or is well recognised by consumers.
5. The Trade Mark Contains a False Geographical Indication
Suppose a trade mark claims to originate in a country or region different from its true country/region of origin. In that case, you can oppose the application, given it can also likely deceive consumers.
Process of Opposition
The opposition process involves two steps. This requires you as the opponent to file a:
- notice of intention to oppose; and
- statement of grounds and particulars.
The applicant may then choose to defend your opposition to their application by filing a notice of intention to defend. This will then require further evidence on your behalf, as outlined below.
Notice of Intention to Oppose
You can file a notice of intention to oppose with IP Australia after paying a fee. The notice of intention to oppose is essentially a form that informs IP Australia and the applicant of your intentions. There is a Government fee of $250 to file this form. You must file the notice within the two-month opposition window for that particular application.
Statement of Grounds and Particulars
Once you have filed a notice of intention to oppose, you have one month to file a statement of grounds and particulars. In this statement, you must specify the:
- details of the application you seek to oppose; and
- which reason or legal grounds you are relying upon to oppose the trade mark application.
There is no further fee for the statements of grounds and particulars. Once you have filed the statement, IP Australia will notify the applicant of your notice of intention to oppose their application and provide them with your statement of grounds and particulars.
Evidence in Support
The applicant can counter your opposition within one month of receiving it from IP Australia by filing a notice of intention to defend. You then have a three-month window to provide evidence supporting the grounds you are relying on to oppose the application. The type of evidence required largely depends on the circumstances of each case. This could include evidence of the reputation your trade mark has acquired, such as the history of use over time or social media followings.
Once you have filed your evidence in support, the defendant has three months to provide evidence in answer. After the defendant has provided evidence in answer, you have one last opportunity to submit evidence in reply.
Once these evidence stages are complete, the opposition will progress to the hearing stage. IP Australia will make a final decision based on the evidence previously filed and any other legal submissions.
There are a range of grounds you can rely upon when opposing a trade mark application, including trade marks that would likely deceive or confuse consumers for being similar to your already registered trade mark. If you have sufficient grounds to rely upon, you can file a notice of intention to oppose and begin the opposition process. If you require further legal assistance with opposing a trade mark application, our experienced IP lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Under the Trade Marks Act, IP Australia’s decision can be appealed and heard in the Federal Court. In this instance, it would be wise to seek legal advice to determine the strength of your claim before pursuing legal action.
Whilst you can file a notice alone, it would be wise to seek legal advice to determine whether you have sufficient grounds to support your opposition.