Questions to Ask a Lawyer Before Defending a Trade Mark Opposition
When you are in the middle of trade mark registration, and you think everything is going smoothly, you might be surprised to receive an opposition to your trade mark application. But before you start defending your application, you should get the advice of a trade mark lawyer. An expert trade mark lawyer can advise you on the strength of your defence and help file your claim. This article provides some key questions to ask your lawyer when defending a trade mark opposition.
What Are the Likely Outcomes of a Defence?
This is probably the most important question to you. Although a lawyer cannot be certain what IP Australia will decide, they can provide you with a realistic indication of the likely outcomes of your defence.
A lawyer will consider the strength of your defence when providing their advice. If they think that you have solid grounds for challenging the opposition, they will advise you accordingly. They will also help you compile evidence that appropriately supports your defence. For example, if a third party is opposing your registered trade mark application on the basis that it is substantially identical to an existing trade mark, you would likely need to provide evidence that proves you applied to register your trade mark first. Likewise, if there is not enough evidence to support your defence, your lawyer will advise you accordingly. Whilst you risk losing your registered trade mark, it is important to be realistic about opposition proceedings. This can save you both time and further costs involved if you are likely to lose out in opposition proceedings.
When Can I File a Notice of Intention to Defend?
Opposition proceedings can quickly become complex, given all the different requirements and deadlines involved. These deadlines are crucial, especially since missing one can be fatal to the registration of your trade mark.
Most importantly, a lawyer can alert you to the timeframe in which you must file your notice of intention to defend. For example, after you receive the opponent’s statement of grounds and particulars, you will have one month to file your notice of intention to defend. If you do not file your defence within a month, your trade mark application will lapse and become invalid.
If you miss this deadline, a lawyer can also help you file for an extension of time with IP Australia if you can prove that you had an acceptable reason for doing so. Under the Trade Marks Act, the only acceptable reasons to grant an extension of time are if:
- there has been a genuine mistake on your behalf; or
- an unavoidable circumstance prevented you from meeting a deadline.
If these reasons do not apply, a lawyer can still advise you on your next course of action.
What Are the Steps Involved in Defending an Opposition?
As stated, opposition proceedings involve many different steps. To avoid confusion, your lawyer can give you a clear outline of what IP Australia will require from you during trade mark opposition proceedings.
Once you file your notice of intention to defend with IP Australia, the opposition will generally proceed as follows:
- the opponent must submit evidence in support of their opposition within a three month period;
- once you receive their evidence in support, you must submit evidence in answer within a three month period;
- once your opponent has received your evidence, they can submit evidence in reply within a two month period; and
- after all the evidence has been collected, the proceedings will move to the hearing stage. This is where a delegate of IP Australia will look at the arguments presented by the opponent and the defence. IP Australia will then make a final decision to resolve the opposition.
A lawyer can help you look ahead and proactively prepare your case, keeping in mind the different requirements that are needed at each stage. Doing so can provide you with a sense of certainty during your defence.
What Are the Costs Involved in Opposition Proceedings?
Although there is no fee for filing a notice of intention to defend your trade mark registration, additional costs may come up during the proceedings. For example, if you require an extension of time, you must pay an additional fee. A lawyer with expertise in trade mark law can help sketch out the potential costs involved in the process. Ultimately, this means you can make a better financial assessment as to whether to pursue your defence.
Before filing your notice of intention to defend a trade mark opposition, you should seek the advice of an expert trade mark lawyer. A lawyer can:
- provide you with a realistic outcome of the opposition;
- help you compile persuasive evidence to defend the opposition;
- guide you through the requirements of opposition proceedings; and
- outline the potential costs involved in opposition proceedings.
Frequently Asked Questions
Under the Trade Marks Act, there is a range of grounds for opposing a registered trade mark. However, some of the most common grounds include: where an identical or similar trade mark already exists in relation to similar goods; the trade mark applicant did not intend to use their registered trade mark; and where the trade mark contains a false indication of its geographic origin.
From one month after IP Australia advertise your trade mark application as accepted, your application is vulnerable to third party opposition. If a third party misses this deadline but has a reasonable excuse to apply for an extension of time, they may be able to oppose your application after this time.