Common Reasons for Receiving a Trade Mark Opposition
George Raptis
One day, you might be surprised to receive notice of opposition from a third party regarding the trade mark you have just registered. However, a third party can challenge the registration of your trade mark for a number of reasons. To avoid potential oppositions, it is important that you know the grounds of opposition that a third party can rely on to challenge your registration. This article outlines the:
- legal grounds for opposing a trade mark; and
- process involved in defending your trade mark registration.
What Can Be Opposed?
A third party can oppose your application to register your trade mark within two months of registering your trade mark. A third party can also oppose your application to:
- amend your trade mark application; or
- the Registrar for an extension of time to complete a relevant act when managing your trade mark.
Grounds for Opposing a Trade Mark
A third party can file a notice of intention to oppose for the following reasons. The third party must also support their opposition with evidence.
Ground #1: You Will Not Be the Owner of the Trade Mark
The first ground that a third party can rely on to oppose a trade mark application is that the person attempting to register a trade mark will not be the true owner of the trade mark.
Ground #2: A Similar Trade Mark Already Exists
Another common ground relied on by third parties to oppose trade mark applications is that the trade mark you are registering is substantially identical or deceptively similar to the trade mark that the third party owns. This could arise especially if the third party has continuously used their trade mark regarding similar goods or services that you intend to register your trade mark for.
Ground #3: No Intention to Use Your Trade Mark
Another ground for opposing a trade mark is if third parties can prove that you do not intend to use the trade mark. This ground stops those who trade mark goods or services with the intent of excluding other businesses from using it, rather than actually using the trade mark themselves.
Ground #4: An Existing Trade Mark Has Acquired a Reputation
In the instance where a pre-existing trade mark has acquired a reputation in Australia and is similar to the trade mark you intend to register, a third party can oppose your application. This is to avoid deceiving or confusing customers about the nature of both businesses with similar trade marks.
Ground #5: Your Trade Mark Contains a False Geographical Indication
If your trade mark concerning a particular good consists of a sign that it originates in a country or region different from its true country or region of origin, a third party can oppose your application for trade mark registration. Like other grounds, this is to prevent consumers from being deceived about the origins of goods.
Defending the Opposition
If you receive a notice of intention to oppose a trade mark, timing is everything if you seek to defend your application. You have one month from the date that you receive the notice to file your notice of intention to defend your application. If you do not file your notice of intention to defend your application within this time period, your trade mark application will become invalid. Subsequently, all third parties will discontinue the opposition.
There is no fee to file your notice of intention to defend the opposition. However, once you file your intention, you have three months to bring forward evidence responding to the opposing third party’s. The evidence you might have to bring forward to defend the opposition may demonstrate that:
- you are the true owner of the trade mark;
- you have been using your trade mark for a continuous period from a certain date; and
- it would be unreasonable for the Registrar to allow a certain action to occur, such as removing your trade mark.
This can quickly become a complicated process. Suppose you seek to defend an opposition to your application. In this instance, it would be wise to seek legal advice before submitting your evidence to answer the opposition. A lawyer may also advise you to apply for an extension of time to file evidence if you cannot meet the deadlines prescribed by IP Australia. This may be granted if you have made a reasonable attempt to comply with the filing requirements.
Once you and the third party opposing your application have filed the required evidence, IP Australia will determine the outcome of your trade mark application.
Key Takeaways
Third parties can challenge your trade mark registration by issuing a notice of intention to oppose. The grounds on which a third party can oppose your application include defending their similarly registered trade mark or because you do not intend to use your trade mark. If you receive a notice of intention to oppose, seek legal advice if you intend to defend your application. If you require further legal assistance with trade mark opposition, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
You can appeal IP Australia’s decision. However, it would be wise to seek legal advice to determine the strength of your claim and avoid further costs if you choose to begin court proceedings.
Before IP Australia decides on the opposition, you might be able to request a cooling-off period to negotiate with the third party opposing your application.
Filing a notice of intention to oppose the registration of a trade mark typically costs $250. For a full cost breakdown of opposition fees, click the link here.