4 Mistakes to Avoid When Opposing a Trade Mark Application

George Raptis

• 19 July 2021
• 14 September 2021
• 6 min read

Trade mark opposition is where any third party formally objects to the registration of a trade mark application. While the opposition process is fairly structured, it can quickly become a demanding process with different deadlines and evidentiary requirements at every stage. This article outlines four mistakes you should avoid when opposing a trade mark application to ensure that your opposition runs as planned. 

1. Misunderstanding Opposition 

Before deciding to pursue a trade mark opposition, you should consider whether it is the correct course of action you should take. As mentioned before, trade mark opposition is where any third party objects to an application for trade mark registration, whether that be an application for:

• newly registered trade marks; 
• removal of existing registered trade marks;
• a time extension; or
• an amendment to existing registered trade marks. 

By opposing a trade mark application, you either intend to:

• oppose the trade mark registration; or
• remove the trade mark from the Register. 

2. Missing Deadlines

The process of trade mark opposition runs on strict deadlines. Whilst there is an option to apply for a time extension when you miss a deadline, IP Australia may not grant you an extension. If you do not meet any deadline during the opposition process, there is a chance that your opposition will cease to continue. 

To avoid missing deadlines, here is a general timeline summary of trade mark opposition proceedings:

1. From the date that IP Australia advertises a trade mark application as accepted on the Register, you have a two-month window to initiate opposition proceedings by filing your notice of intention to oppose. 
2. Within one month of filing your notice, you must submit your statement of grounds and particulars. This is where you identify the legal ground you are relying upon to justify your opposition. Failing to submit the statement on time will result in the opposition ending.
3. Upon receiving your statement, the trade mark applicant or the trade mark owner has one month to decide whether to defend against your opposition. 
4. If the applicant or trade mark owner files a notice of intention to defend your opposition, you have three months to prepare evidence supporting your opposition from the date that the applicant files their notice. 
5. After submitting evidence in support, the trade mark applicant (‘the defendant’) has three months to submit evidence in answer.
6. Once the defendant has submitted evidence in answer, you then have two months to submit evidence in reply. 

Once you have completed all evidence stages, your opposition will progress to the hearing stage. This is where IP Australia will make its final decision based on the evidence both you and the defendant have filed. 

3. Unsupported Ground 

Before submitting a notice of intention to oppose a trade mark application, you should consider whether you can sufficiently rely on a legal ground to support your opposition. The legal grounds for opposing a trade mark application are varied and listed in the Trade Marks Act. However, the most common grounds for opposition include: 

• the applicant will not be the owner of the trade mark that they are applying for;
• a substantially identical or deceptively similar trade mark already exists;
• the applicant does not intend to use the trade mark;
• your existing trade mark, whether it is registered or unregistered, has acquired a reputation in the market; or
• the trade mark contains a false indication of its country or region of origin.

In your statement of grounds and particulars, you must fill out the prescribed form by:

• identifying one or more of these grounds to rely on; and 
• providing particulars about how the trade mark application you are opposing satisfies this ground. 

The particulars you provide will depend on what ground identified in the Trade Marks Act you are relying upon.

For example, suppose you oppose a new trade mark application because it is substantially identical or deceptively similar to another trade mark. In that case, in the particulars, you should provide a list of already registered trade marks that likely conflict with the new trade mark application.

On the other hand, if you are relying on the ground that the trade mark applicant does not intend to use the trade mark, you must provide evidence to support your belief that they do not have an intention to use the trade mark. 

4. Not Seeking Legal Advice Earlier 

Often applicants will initiate the process of opposition without planning ahead for the different requirements of opposition proceedings. To counter this, a lawyer with expertise in trade mark opposition can help advise you whether the opposition is worth pursuing from the outset and whether you have sufficient grounds and evidence to rely upon. If you then decide to undergo opposition proceedings, a lawyer can help guide you through different stages and ensure that you meet all relevant deadlines. By seeking legal advice early, you can ultimately make a better assessment of the strength of your opposition. 

Key Takeaways 

Before deciding to commence trade mark opposition proceedings, you should consider the:

• available outcomes for opposition proceedings;
• deadlines involved in opposition proceedings;
• grounds you can rely on the support your opposition; 
• need for legal advice. 

If you need help with opposing a trade mark application, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page. 

Frequently Asked Questions