Tips for Opposing a Trade Mark Application Successfully

George Raptis

• 4 August 2021
• 17 August 2021
• 5 min read

Often, trade mark owners can come across accepted trade mark applications that bear a close resemblance to their already registered trade marks. In this instance, owners have a two-month window from when IP Australia advertises a trade mark as accepted to oppose the trade mark application. This article outlines the basics of trade mark opposition and provides some tips for successfully opposing a trade mark application. 

Which Applications Can I Oppose? 

Within two months of IP Australia advertising a trade mark application as accepted, anyone can oppose the trade mark application. Although the most common oppositions concern the registration of new trade marks, you can oppose applications that:

• amend an existing trade mark application;
• remove an existing trade mark from the register for non-use; and
• extend the time for a trade mark application for more than three months. 

Reasons for Opposing a Trade Mark 

When you oppose a trade mark application, you must have an acceptable reason for doing so. Under the Trade Marks Act, you must oppose a trade mark application based on a certain ‘ground’ listed in the Act. The grounds for opposition include:

• the person applying for the trade mark will not be the owner of the trade mark;
• a similar trade mark already exists;
• the person applying for the trade mark does not intend to use it;
• your existing trade mark, registered or not, has acquired a reputation in the market; or
• the trade mark contains a false indication that it originates from a country or region different to its actual place of origin. 

You should note that similar trade marks can coexist if they concern different classes of goods or services. For example, the cosmetic brand ‘MAC’ can coexist with Apple Inc.’s Mac computers. This is because consumers are unlikely to be deceived or confused by either company’s usage of the term ‘mac.’ IP Australia is not responsible for notifying you of any trade mark applications that are potentially similar to your own mark. Rather, it is your responsibility to identify similar applications as they arise on the trade mark registry. 

How to File an Opposition 

Opposing a trade mark application involves a two-step process. 

1. Notice of Intention to Oppose

You must first file a notice of intention to oppose online via IP Australia. The form will require:

• your personal details;
• the trade mark number of the application you wish to oppose; and
• the type of opposition which, in this instance, would be the removal of the trade mark identified. 

When filing the notice, you are also required to pay a fee of $250 to complete the application process. 

2. Statement of Grounds and Particulars 

Within one month of filing a notice of intention to oppose, you must file a statement of grounds and particulars. This is where you must identify the legal ground on which you base your opposition. After filing this, IP Australia will notify the trade mark applicant of your opposition. From then on, you become the ‘opponent’. If you fail to file a statement of grounds and particulars within one month of filing your notice of intention to oppose, the opposition will no longer proceed. 

Given oppositions can be a long process that might not necessarily lead to the removal of the trade mark application, it would be wise to seek legal advice to determine whether you have a strong case for relying on a particular legal ground. 

Responding to a Defence 

Within one month of receiving your statement of grounds and particulars, the trade mark applicant has the opportunity to defend the opposition by filing a notice of intention to defend with IP Australia. The trade mark applicant becomes the ‘defendant’. If the trade mark applicant does not defend your opposition, their application will terminate, and the opposition will cease to continue.

You then have three months to prepare evidence in support of your opposition. This will usually be evidence proving the legal ground for the opposition. For example, suppose you file an opposition made because the good contains a false indication of a geographical region. You can support this by proving that the good is produced somewhere else.

Once you have submitted evidence in support, the defendant has three months to submit evidence in answer. This is evidence responding to your submission. If the defendant submits evidence in answer, you have two months to submit further evidence in reply. After filing all evidence, IP Australia will consider all the evidence and decide on this basis.

Key Takeaways

Trade mark opposition can be a lengthy and complex process. Before filing a notice of intention to oppose a trade mark application, you should seek legal advice to ensure that you have:

• a sufficient basis for relying on a legal ground to oppose the trade mark application;
• evidence to support your opposition. 

If you need help 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