A trade mark is a sign that distinguishes your business from others. As a business owner, it’s important that you monitor possible trade mark infringement and oppose another trade mark if it affects your business. You can only oppose a trade mark during the opposition period (before registration), and your objection must fall within at least one of the grounds for opposition set out in the Trade Marks Act 1995. We set out how you can apply to oppose a trade mark in four steps.

1. Common Grounds for Objection

Applicant is not the owner

If you can prove that a trade mark applicant is not the owner, you can apply to oppose.

The trade mark is identical or very similar to another

The aim of a trade mark is to differentiate your business or service from others, and an identical or very similar trade mark will cause confusion in the marketplace and damage your brand.  

When Kylie Jenner applied to trade mark the name ‘KYLIE,’ Kylie Minogue just couldn’t get it out of her head. Minogue subsequently filed for opposition, as she had previously trade marked her name ‘Kylie Minogue,’ and products related to her name. If Minogue were to oppose the trade mark in Australia, she would do so because ‘KYLIE’ is substantially identical or deceptively similar to ‘Kylie Minogue’ and her associated trade marks. For Jenner to register the trade mark ‘KYLIE,’ she would have to prove that the trade marks are unlikely to cause confusion in the marketplace. .

The trade mark is likely to deceive or cause confusion

If you believe that a trade mark is likely to deceive, you can apply to oppose it.

In 2015 Beyonce claimed that the owners of Feyonce Inc., infringed her trade mark name, claiming their products caused ‘irreparable harm’ to her business and brand. The online brand Feyonce Inc. sells products with ‘Feyonce’ plastered across it along with references to lyrics in Beyonce’s songs. If Beyonce were in Australia and wanted to oppose the trade mark ‘Feyonce’, she would have to prove that ‘Feyonce’, a play on words of fiancé and her name, deceived consumers into thinking that she is involved with the brand.

2. Filing for an Opposition

Once you have a valid ground of opposition, you can then proceed with filing. You must first file a notice of intention to oppose followed with a statement of grounds and particulars to IP Australia. The statement of grounds and particulars must refer to the grounds of opposition under the Trade Marks Act 1995.  If you do not file a statement of grounds and particulars after your notice, the trade mark will proceed unopposed to registration. If the applicant wants to defend an opposition, they may file a notice of intention to defend.

3. Evidence

Evidence is an important part of the trade mark opposition stage and must be submitted in the form of a declaration. You must file evidence to IP Australia within three months of receiving a copy of the applicant’s notice to defend. There is a high standard of proof associated with evidence in a trade mark opposition, and obtaining professional legal advice is recommended. Once you have filed evidence, the applicant can then file evidence in response.

4. Hearing

Either you or the trade mark owner may request a hearing after exchanging evidence. The hearing allows you and the other party to submit statements of support. After the Hearing Officer considers the issues and submissions, a decision with reasons is given to the parties.

Key Takeaways

When opposing a trade mark registration, you must be aware of the procedure, time limits, and grounds. Your opposition to the trade mark must be made based on at least one of the grounds set out in the Trade Marks Act. You must then file a notice of intention to oppose, followed with a statement of grounds and particulars in the required format and within the required time frame. You must submit evidence of your objection to IP Australia and then there may be a hearing to determine whether or not your trade mark opposition is successful. 

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Applying to oppose a trade mark is complicated, and if you have any questions, you should ask a trade mark lawyer. Get in touch with our intellectual property team on 1300 544 755.

Raya Barcelon

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