Benefits of Working With a Lawyer When You Oppose a Trade Mark
Understandably, trade mark opposition seems like a daunting process. With all the different forms required for the opposition, the accompanying evidence and different deadlines you must meet, there is a lot to consider when undertaking trade mark opposition. However, for the reasons explained in this article, you can widely benefit from working with a lawyer throughout trade mark opposition, making the overall process much more manageable.
What is Trade Mark Opposition?
Put simply, trade mark opposition is the formal process of objecting to someone’s trade mark registration or an application concerning an already registered trade mark. From the day IP Australia advertises an application as accepted on the Registry, you have a two-month period to file a notice of intention to oppose the application if you believe the application falls within any of the grounds listed in the Trade Marks Act.
Once you have submitted your notice to IP Australia, you have one month to support your opposition with a statement of grounds and particulars. This is where you must identify the ground for opposition you rely upon and provide specific reasons why the application satisfies the ground provided.
Upon receiving your statement, the applicant of the trade mark you are opposing has one month to decide whether to defend against your opposition. This will then initiate a series of evidentiary processes where you must exchange evidence back and forth with the defendant. Once all the evidence is compiled, the opposition will proceed to the hearing stage. At this stage, a delegate of IP Australia will consider both sides of the proceedings and make a final decision.
As you can likely tell, trade mark opposition is no light fare. It involves a formal legal process that can become complex, considering all the different requirements that arise throughout the proceedings. Nevertheless, trade mark opposition can be easily navigated with the help of a lawyer for the reasons expressed below.
Preparing Your Case
As mentioned above, you cannot oppose a trade mark application for any reason. Rather, you must rely on a ground for opposition set out in the Trade Marks Act. These grounds include that the application:
- is incapable of distinguishing goods and services;
- is substantially identical or deceptively similar to an existing trade mark, likely your own;
- contains a false geographical indication;
- was made in bad faith;
- contains a prohibited sign; or
- contains a defect.
Other grounds for opposition include that the:
- trade mark being applied for is similar to a trade mark you have used at an earlier date;
- applicant is not the owner of the trade mark; or
- applicant does not intend to use the trade mark they have applied for.
A lawyer can help you identify the strongest ground you can rely on to oppose the trade mark application. A lawyer’s advice can also help you decide whether opposition proceedings are worth pursuing based on the strength of your case and whether you actually seek the desired outcomes of opposition proceedings.
A lawyer can also help you with the submission of a statement of grounds and particulars. Further, they can compile sufficient evidence to support your opposition in the instance where the applicant wants to defend the opposition. This added foresight will mean that you are prepared for the duration of the proceedings and can meet the different requirements at each stage.
Opposition proceedings are fraught with different deadlines. A failure to meet certain deadlines might result in your opposition no longer proceeding. There is an option to apply for a time extension in the instance where you miss a deadline. However, IP Australia does not automatically grant an extension of time, as you must have a good reason for missing the deadline.
A lawyer with trade mark opposition experience can ensure that you do not miss a deadline. By closely guiding you through opposition proceedings, the lawyer can notify you when different submissions are required and ensure that you are readily prepared to make submissions. In the instance where you forgo a deadline due to a genuine error on your behalf or as a result of an event beyond your control, a trade mark lawyer can also help you apply for an extension and submit the correct documents for IP Australia’s review.
When deciding to oppose a trade mark application, a lawyer can advise you on the strength of your opposition and whether it is worth pursuing. If you decide to proceed with the opposition, a lawyer with experience in trade mark oppositions can help:
- you compile your submissions;
- you meet deadlines throughout the proceedings; and
- give you the foresight necessary to prepare for the different requirements that may arise during opposition proceedings. 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
You must pay a government fee of $250 when you file a notice of intention to oppose. You can find a more comprehensive breakdown of IP Australia’s costs here.
If you have missed a deadline during opposition proceedings, IP Australia can grant a time extension if there has been a genuine error made on your or your agent’s behalf or an event beyond your control has meant that you were unable to meet the deadline. Of course, whether IP Australia accepts your application for a time extension rests on their discretion.