Mistakes to Avoid When Replying to a Trade Mark Opposition
As a trade mark owner, defending an opposition to your trade mark application is a big deal. After all, if the opposition is successful, IP Australia can limit your use of your trade mark or even remove it from the Register altogether. However, there are some common mistakes you can avoid when replying to trade mark opposition. For this reason, it is important that you:
- reply to an opposition on time;
- remain realistic throughout the process;
- ensure that you have enough evidence to support your defence; and
- seek legal advice early.
This article will outline the key mistakes to avoid when replying to a trade mark opposition.
1. Failing To Reply On Time
Time is of the essence when it comes to trade mark opposition proceedings. At each stage of the process, there are different deadlines. If you miss these, it can be fatal to the success of your defence. For this reason, you should reply to trade mark opposition on time.
From the date you receive the opposition’s statement of grounds and particulars, you have one month to file your notice of intention to defend your application.
If you miss this deadline, you may be able to apply for a time extension with IP Australia. However, IP Australia does not automatically grant time extensions. Rather, it is subject to their discretion and largely depends on whether there was:
- a genuine error made on you or your agent’s behalf that meant that you missed the deadline to file your notice; or
- a circumstance beyond your control that arose that prevented you from filing your notice per the deadline.
To avoid the uncertainty involved with IP Australia granting you an extension, you should ensure that you reply to the opposition on time.
2. Being Unrealistic
It is important that before you reply to your opposition, you make a realistic decision to defend your trade mark application. As the receiver of an opposition, it is completely normal to feel as though you are the wronged party. However, you should not let this cloud your judgment. It is important that you understand the reasons why the opponent has objected to your application and whether they have reasonable grounds to challenge your application.
If you have no strong grounds to defend your trade mark, it might be worth accepting defeat and choosing not to defend your application. A lawyer can help clarify your position and determine whether it is worth pursuing the defence.
By being realistic, you can save yourself time and potential costs by not prolonging opposition proceedings.
3. Failing To Meet Evidentiary Requirements
Many trade mark applicants are unaware of the evidentiary requirements in opposition proceedings. Once you submit your notice of intention to defend your application, you will initiate a series of evidentiary proceedings. This is where you and your opponent will submit evidence back and forth until the opposition moves onto the hearing stage.
You must understand that oppositions are decided on fact and law. This means that the strength of your defence largely depends on whether you have sufficient evidence to support your claim and respond to your opponent.
The type of evidence you submit depends on what grounds your opponent is objecting to your trade mark application. For example, if your opponent claims that a trade mark exists concerning similar goods, your defence might include evidence of your trade mark’s priority date.
If you have insufficient evidence to support your defence, you might have to reconsider whether defending your application is worthwhile. For the same reasons mentioned above, being realistic about trade mark opposition can save you both time and unwanted costs in the instance where the opposition was to proceed.
4. Not Seeking Legal Advice Early
Perhaps the biggest mistake trade mark applicants make is not seeking legal advice early. Since trade mark opposition is fraught with different deadlines, it is important that you readily seek legal advice. An experienced lawyer can advise you on the strength of your defence and whether it is worth pursuing.
A lawyer can also guide you through the different requirements of opposition proceedings. In addition, they can compile evidence that responds to your opponent and compile written submissions for the hearing stage of the proceedings. Ultimately, seeking the advice of a lawyer will make defending an opposition to your trade mark application a much smoother and less stressful process.
When deciding to defend an opposition to your trade mark application, you should:
- reply on time to ensure you can defend your application;
- consider the realistic outcomes of pursuing your defence;
- contemplate the evidentiary requirements that will spring up in opposition proceedings; and
- seek the advice of a trade mark lawyer early.
By doing the above, you can ensure that your defence to the opposition is worthwhile and has every opportunity to succeed.
Frequently Asked Questions
There is no fee associated with filing a notice of intention to defend.
Arguably the biggest benefit to trade mark registration is the protection it enjoys under the Trade Marks Act. Owners of a registered trade mark have the exclusive right to use, license and sell their mark for ten years from their trade mark’s filing date. This means they can exclusively market their business’ goods and services using their brand. In the instance where someone copies or misuses their brand, they also have the legal means to prevent them from doing so.