Trade marks are signs which are used to distinguish your business goods and services from those of others. Such signs may include brand names, symbols, logos and slogans. How exactly could I react if someone opposes the registration of my trade mark? Registering your trade marks helps you to protect your trade marks from competitors. Your trade marks distinguish your products and services, so as you build your brand, your trade marks may become more valuable and more important to protect.  Your trade marks can communicate your level of quality, and help to develop and retain the goodwill you generate. Most businesses will have at least one trade mark. Registering trade marks is important because it gives you exclusive rights to use the trade mark, and to license or sell the trade marked goods and services, in the specific categories in which the trade marks are registered. For more information on the benefits of registration please see our article. 

Grounds for Opposition

Under the Trade Marks Act 1995, a competitor may make a formal objection against the registration of a trade mark going ahead.  This is opposing a trade mark registration. Opposing a trade mark is different from rejecting a trade mark request for registration. The Registrar of Trade marks decides whether or not a trade mark can be registered.  If the trade mark can be registered, the next question is whether there will be any opposition. The main grounds for opposition are set out below:

  • The applicant is not the owner of the mark
  • There is no intention to use the mark
  • The opponent making the objection used this mark earlier
  • The mark is likely to deceive or cause confusion
  • The mark contains false geographical indication
  • The application to register was accepted on the basis of false evidence
  • The application was made in bad faith

The Process of Opposition

The opponent must prove at least one of these grounds, in order for the trade mark application to be successfully opposed. The opponent must follow the following steps: First, a notice of opposition must be filed with the Trade Marks Office and served to the applicant:

  1. The original evidence in support along with the notice of opposition must be filed with the Trade Marks Office with the appropriate fee.
  2. The notice must identify at least one valid ground for opposition. The basis for this objection must be supported by any evidence in support.
  3. The notice along with copies of the supporting evidence must be served upon the trade mark applicant. This must be done within 3 months from the day that the notice of opposition was filed with the Trade Marks Office.

Upon receiving this notice, the applicant (seeking the trade mark) may serve and file evidence which responds to the objections.  This evidence in answer must be served on the opponent within 3 months from the day that the applicant was served with the evidence in support. Finally, the opponent may respond with evidence in reply, to respond to the applicant’s evidence in answer. The evidence in reply must be served on the applicant within 3 months from the day that that the opponent was served with the evidence in answer.

The Hearing

After the opponent and the applicant have exchanged evidence, a hearing may be requested by either party for a decision to be made about the trade mark registration. A hearing will receive priority over decisions that the Registrar of Trade Marks must make in the absence of a request for a hearing.

Trade Mark Specialist

Oppositions may be complex, lengthy and expensive.  If you are considering filing or defending an opposition it is recommended to seek legal advice from an intellectual property lawyer or trademark specialist. For more information about trademarks and intellectual property, please see: http://www.ipaustralia.gov.au/

Lachlan McKnight

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