Protecting your business’ intellectual property (IP) is crucial to ensuring your business’ success. Monitoring your trade mark closely will allow you to act quickly against IP theft. Ensuring you oppose a trade mark application that is too similar to you is crucial to protecting your brand. It will also allow you to fend off competitors. This article will explain how you can oppose a trade mark application.

How Do You Know Which Trade Marks to Oppose?

Checking the Australian Trade Marks Register and Official Journal of Trade Marks is one way that you can monitor applications. When you monitor the applications, you are looking for similar trade marks to yours. If you see that someone has lodged an application for a trade mark that is very similar to yours, you can oppose its registration.

Grounds for Opposition

Any interested third party can oppose the registration of a trade mark. There are numerous grounds on which a party can oppose the registration of a trade mark, including that the trade mark is:

  • substantially identical/deceptively similar to another registered trade mark;
  • used earlier by an opponent;
  • not owned by the applicant;
  • similar to a trade mark which has acquired a reputation in Australia;
  • likely to deceive and cause confusion;
  • not intended to be used by the applicant;
  • made in bad faith; or
  • being registered as a defensive trade mark.

If you wish to oppose, you should:

  1. select one or multiple grounds that are relevant to your case;
  2. provide thorough and specific details of those grounds to make it easier for the examiner to assess your opposition; and
  3. seek legal advice before opposing a trade mark application. This will help you determine whether you have adequate grounds for opposition. It will also help you understand whether your opponent may successfully raise a defence against you.

Opposition proceedings should not be taken lightly. They can be costly and can result in the unsuccessful party being ordered to pay the other party’s costs.

Two-Step Opposition Process

There are two steps in the opposition process.

Step 1: File a Notice of Intention to Oppose

You must start with filing a notice of intention to oppose electronically with IP Australia. You must also pay the relevant fee within two months of the trade mark application being advertised as accepted. This time frame commences after an IP Australia examiner has examined the application.

Step 2: File a Statement of Grounds and Particulars

The second step is to file a statement of grounds and particulars. The statement sets out the legal grounds for opposing the trade mark. You must file the statement within one month of filing the notice of intention to oppose. Also, it will require you to fill out details of the trade mark you are opposing and name of the owner/ Additionally, it distinguishes the type of opposition proceedings.

Be clear whether you are opposing the registration of the trade mark or whether you are seeking to remove a trade mark. You are now the “opponent”. If you do not file a statement of grounds and particulars, the opposition will not proceed. There is no fee for filing the statement of grounds and particulars.

IP Australia will notify the applicant of your notice of intention to oppose and the statement of grounds and particulars.

If the applicant decides to defend their application, they must file a notice of intention to defend with IP Australia. The applicant must file the notice within one month of receiving the statement of grounds and particulars. If the applicant does not file the statement, the trade mark application will lapse and the opposition will not continue. Accordingly, the applicant is now the “defendant”. The defendant will need to begin preparing evidence to support their defence.

Evidence in Support

IP Australia will inform you of the notice of intention to defend, which will trigger a three month time frame from the receipt of the notice to file evidence in support of the opposition. The evidence must support and establish the grounds for opposing the trade mark.

The evidence required to support your application should be relevant to each ground and will depend on the case at hand. Examples of a reputation and earlier use might include evidence of internet rankings, social media followings, online publication and history of use over time.

Evidence in Answer

The defendant will be notified of your evidence and will have three months to submit evidence to answer the evidence in support. If you do not file any evidence in support, the defendant will be notified that no evidence has been filed and will have three months to answer the statement of grounds and particulars.

Evidence in Reply

Once the defendant submits the evidence in answer to IP Australia, you will have an opportunity to reply to the defendant by filing evidence in reply. This must be filed within two months of receiving notice of the defendant’s evidence in answer.

A government officer must make a decision, considering both parties’ evidence. Alternatively, the parties can request that the court hears the matter at a formal hearing by a hearing officer. At a hearing, the parties can make oral or written submissions on the day to argue their case. The hearing officer will hear both sides and consider the matter and a decision will be made in three to six months.

Appeals

It is possible to appeal a decision by the hearing officer by commencing proceedings in the Federal Court or Federal Circuit Court. The court will hear the case again from scratch.

Remember, litigation is costly and uncertain, so it is important to seek legal advice before going down this path. A lawyer will be able to explain your options to you, including any alternatives to litigation. You can then make an informed decision about what is best for your business. Your lawyer may advise you that you have a case but, to avoid a dispute, you should first attempt to reach a commercial agreement with the other party.

Key Takeaways

Trade marks and other forms of IP are often valuable business assets and each business should budget for protecting their IP. Registering your trade mark is only the first step, however. You must then monitor other applications to ensure competitors are not trying to register trade marks that are too similar to yours. Trade mark opposition proceedings can be costly and time consuming.

However, with good advice and a strategy in place, your business can oppose the registration of a trade mark application that could, if registered, affect your business in the long run. Accordingly, ensure you have a basic understanding of the process involved with opposing a trade mark. Also remember that a court will consider every case on its merits.

If you have any questions about trade marks or wish to oppose a trade mark application, get in touch with LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Elodie Somerville
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