Opposing A Trade Mark With A False Geographical Indication

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Table of Contents

• Ground of Opposition: False Geographical Indication
• Opposition Process
• What Defences Can The Trade Mark Applicant Raise?
• What Happens Next?
• Key Takeaways
• Frequently Asked Questions

Say you come across a competitor’s trade mark that claims the origins of their goods and services. This claim about the origin of the goods could provide grounds for trade mark opposition if this geographical indication is false. Trade mark opposition involves a formal objection to trade mark registration. Under the Trade Marks Act, anyone can oppose a trade mark application. However, the reasons or ‘grounds’ you can rely on to oppose the registration are limited. Hence, this article explains one ground of trade mark opposition, that being a trade mark contains a false geographical indication.

Ground of Opposition: False Geographical Indication

You must establish a few elements to rely on this ground of opposition. Understanding these elements can help determine whether you can oppose a trade mark application.

1. The Trade Mark Contains a Geographical Indication

A ‘geographical indication’ identifies a good as originating in a specific region where a particular quality, reputation or other characteristics of the good is attributable to that geographic origin. 

To demonstrate that a trade mark application contains a sign which is a geographical indication for the goods, you should provide evidence that consumers generally recognise the sign as a geographical indication. This could include:

• declarations from experts concerning the goods; or 
• proof that someone has registered the geographical indication in Australia. 

For example, some registered geographical indications include Parmigiano Reggiano for cheese and Scotch Whisky for spirits.

2. The Geographical Indication Indicates an Origin That Is Not The Actual Origin of the Applicant’s Goods

To establish this element, you must provide evidence that the trade mark applicant’s goods are the same or of the same description as the designated goods. For example, say you produced wine in the Hunter Valley but wanted to use a trade mark that indicated the wine originated from the Barossa Valley. In this instance, your goods are essentially the same as the designated goods associated with the Barossa.

If it is difficult to prove the above, you can prove that the applicant’s trade mark use would likely deceive or confuse consumers. However, you should note that the mere presence of a geographical place name in a trade mark is insufficient to prove that the applicant’s use of the trade mark is likely to deceive or cause confusion among consumers. There must be a real and obvious danger that a consumer will be deceived or confused by the false geographical indication.

Opposition Process

If you can satisfy the elements above, you must file your notice of intention to oppose within two months of IP Australia advertising the trade mark application as accepted. When filing the notice, you must also pay a fee of $250 to complete the process. 

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(s) on which you base your opposition. After filing this, IP Australia will notify the trade mark applicant of your opposition.

However, within one month of receiving your statement of grounds and particulars, the trade mark applicant can defend the opposition by filing a notice of intention to defend. If the trade mark applicant does not file a defence, their trade mark application will lapse, and the opposition will discontinue.

What Defences Can The Trade Mark Applicant Raise?

It is essential to preempt any defences the applicant might raise since this can determine whether you begin the opposition process in the first place. Under the Trade Marks Act, the applicant can file a defence if they can establish that:

• their particular goods did originate in the country, region or locality indicated by the geographical indication;
• the sign contained in their trade mark has ceased to be a geographical indication in the country of origin for the designated good;
• the geographical indication applies to both the particular goods in the application and the designated goods; or
• the geographical indication is also a common English word or expression, and the applicant does not intend to use the trade mark to deceive or confuse the public regarding the origin of those goods.

What Happens Next?

If the trade mark applicant files a defence, the next step in the opposition process is evidence. This is where both parties exchange proof to support their grounds for and against the opposition.

Once the evidence stages have ended, and if both parties have paid for either a hearing or a decision to be made, then the Registrar must decide whether or not a particular opposition ground was deemed to be established. The Registrar can refuse the application to register the trade mark for some or all the goods and services listed in the application.

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Key Takeaways

Suppose a trade mark application contains a geographical indication of the applicant’s goods that is not the actual origin of the goods. In that case, this can provide grounds to oppose trade mark registration. If you want to oppose the application, you must do so within two months of IP Australia advertising the trade mark application as accepted. Once you pay the relevant fee, you have one month to file a statement of grounds and particulars that identifies the reason or ground on which you base your opposition.

If you need assistance opposing trade mark registration, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions