Can Trade Mark Opposition Protect My Trade Mark?

George Raptis

• 2 November 2022
• 25 November 2022
• 6 min read

Once IP Australia advertises a trade mark application as accepted, you have two months to oppose its registration. When opposing trade mark registration to protect your trade mark, there are specific grounds you must rely on to establish a successful opposition. Namely, you can oppose a registration if:

• the applicant is not the owner of the trade mark; or
• the trade mark may confuse or deceive consumers since it is similar to your trade mark.

This article explains how trade mark opposition can protect your unregistered trade mark.

Ground #1: The Applicant is Not The Owner

If you have a registered trade mark, questions about ownership are generally not contentious. However, IP Australia will likely reject someone’s application for a trade mark to which you own the rights.

Hence, this ground is likely to apply in situations where you have used a trade mark for several years but have yet to register with IP Australia. For example, the other applicant may have performed searches of the trade mark register. Because of the absence of registration, their application would be accepted by IP Australia. The onus would be on you to establish that you are the true owner of the trade mark, albeit unregistered. 

In Australia, unregistered trade mark ownership typically resides in the first person to use the sign in trade in particular goods or services. Therefore, evidence of using your trade mark can range from your business’ promotional materials to your product packaging. In any event, the evidence you rely upon to show prior use must have occurred in Australia before the applicant:

• used the trade mark; or
• filed their trade mark application.

Ground #2: The Trade Mark May Confuse or Deceive Since It is Similar to Your Trade Mark

Opposition to protect your trade mark under this ground requires you to establish that:

1. your registered or unregistered trade mark has acquired a reputation in Australia before the priority date of the applicant’s trade mark;
2. in light of your trade mark’s reputation, the applicant’s use of the trade mark would likely deceive or confuse consumers.

While there are no clear guidelines for establishing your trade mark’s reputation, you can prove that your trade mark has a reputation through:

• evidence of consumer appreciation of the trade mark; and
• inferences from a high sales volume combined with substantial advertising figures using the trade mark.

The likelihood of deception or confusion resulting from the applicant’s use of the trade mark depends on various factors. While the possibility of confusion depends on the reputation of your trade mark, it can also depend on the level of similarity between:

• the goods and services you sell; and
• your trade mark itself.

You should note that your use of the trade mark must concern goods or services that are “the same kind of thing” as the specified goods or services in the trade mark application. So, for example, if an applicant registers the name ‘Fred’s Fruit’ concerning fresh produce, you would have to establish that you have previously used the name for essentially the same goods.

How To File an Opposition

The first step to opposing the registration of a trade mark is filing your notice of intention to oppose and paying the relevant fee. This is a document where you identify which trade mark application you wish to oppose.

Importantly, any opposition you file must be made within two months of IP Australia advertising a trade mark application as accepted.

The second step is to file a statement of grounds and particulars within one month of filing the notice of intention to oppose. This is where you identify what ground(s) you rely on to oppose the application.

For example, if you oppose a trade mark application on the basis that the applicant is not the owner, in your particulars you should:

• identify when you first used the trade mark;
• the goods and services you used the trade mark in respect of; and
• whether your use was before the application’s priority date you are opposing.

You should note that there is no fee for filing a statement of grounds and particulars. However, there will only be opposition if you file a statement of grounds and particulars.

IP Australia will then send these documents to the trade mark applicant whose registration you oppose. If they defend the opposition, they must file a notice of intention to defend within one month of receiving your statement of grounds and particulars. If the trade mark applicant does not file a defence, their application will lapse, and the opposition will discontinue.

Alternatively, if the trade mark applicant files a defence, the next step in the opposition process is evidence. This is where both parties exchange evidence for supporting their grounds for and against the opposition.

Once the evidence stages have ended, the parties can opt for a hearing, following which the Registrar must decide whether or not to bar registration of the trade mark from the register. The Registrar can choose to register the trade mark for none or some of the goods and services listed in the application.

Key Takeaways

If someone attempts to register your unregistered trade mark, opposition can protect your trade mark if you can prove you used it first concerning particular goods and services. Alternatively, if someone attempts to register a trade mark that may confuse or deceive consumers since it is similar to your trade mark, you can oppose it on this ground. If you want to oppose a trade mark application to protect your unregistered trade mark, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.

Frequently Asked Questions