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Third parties in Australia can oppose trade marks, a process which they can do through IP Australia. There are several reasons you may want to oppose a trade mark, or receive a trade mark opposition. This article will outline the grounds for trade mark opposition in Australia.

Reasons to Oppose a Trade Mark

Third parties will generally oppose a trade mark that they believe is too similar to their own. The fear is that registration of both trade marks will cause customer confusion. Any interested third party can file a Notice of Intention to Oppose (‘NIO’) with IP Australia against a trade mark.

There are two main types of opposition:

  • opposition to registration of a trade mark, which you can commence within two months of IP Australia advertising the trade mark; and
  • removal for non-use, which you can commence if a trade mark owner has not used their trade mark for three years. 

It is important to note that oppositions can be complex and costly. If you are considering opposing a trade mark, consider seeking legal advice from a lawyer or trade mark attorney.

Grounds for Trade Mark Opposition

You can typically only oppose a trade mark that IP Australia has already accepted. In certain circumstances, you can also oppose a registered trade mark.

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Grounds for Opposing Registration of an Accepted Trade Mark

If you are seeking to oppose an accepted trade mark, below are some of the grounds for opposition:

  • the trade mark applicant is not the owner of the trade mark; 
  • you can prove earlier use of the same/similar trade mark; 
  • the trade mark applicant is not intending on using the trade mark in Australia; 
  • the trade mark contains a false geographical indication; 
  • IP Australia accepted the trade mark based on defective documentation or false evidence; 
  • the applicant made the trade mark application in bad faith.

Grounds for Removal Based on Non-Use

If you seek to remove a registered trade mark from the register based on non-use, you can rely on two grounds.

Firstly, you may make a non-use opposition on the basis that on the day on which the applicant applied for the trade mark, they had no intention in good faith to:

  • use the trade mark in Australia; or
  • authorise the use of the trade mark in Australia; or
  • assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the trade mark relates. Additionally, the registered owner must also not have:

  • used the trade mark in Australia; or
  • used the trade mark in good faith in Australia;

concerning those goods or services at any time one month before you file your opposition.

Secondly, you can make a non-use opposition on the basis that the trade mark has:

  • remained registered for a continuous period of 3 years; and, 
  • at no time during that period, the person who was then the registered owner:
    • used the trade mark in Australia; or
    • used the trade mark in good faith in Australia;

in relation to the goods or services to which the application relates.

Key Takeaways

The trade marks opposition process can be extremely complex to navigate without the assistance of a legal professional. If you are interested in opposing a trade mark, or receive an opposition to a trade mark, 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

Who can oppose a trade mark?

Any third party can oppose a trade mark if they believe they have the grounds to do so.

Do I have to use my trade mark?

If you do not use your trade mark for a period of three years concerning the goods and services you registered it for, it is vulnerable to an opposition on the grounds of non-use.

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