When you register your trade mark, you may do so usually or by first arguing that a similar mark should be removed for non-use. Other parties are able to oppose either of these processes. To do so, they must file a notice of intention to oppose. You should file a notice of intention to defend in response. By using this formal notice, you show that you want to argue for your ability to register your trade mark, or belief that another trade mark should be removed for non-use. This article will explain what you should include in your notice of intention to ensure the strength of your trade mark.
What Do I Need to Consider When Filing a Notice of Intention to Defend?
It is important to consult with a legal professional or trade mark attorney to ensure that your notice of intention to defend is filed correctly. In general, however, there are several steps you can take personally to improve the likelihood of your notice’s effectiveness. These are:
- using the correct ‘Notice of Intention to Defend’ form (the ‘form’) on IP Australia’s online services portal;
- accurately noting your personal information (e.g. name, address) and an address for service in either Australia or New Zealand;
- specifying the trade mark application/registration number and relevant formalities; and
- clearly stating your intention to defend yourself against the other party’s opposition to your registration or their retention of a non-used trade mark.
Notably, you do not have to pay any fees to file a notice of intention to defend.
Application for an Award of Costs
Opposition proceedings are legal processes. Thus, if the court reaches a final decision, the unsuccessful party or parties may be liable to pay for the successful party’s legal expenses. This is known as an award of costs. If you wish to recoup your legal costs, then it may be worth applying for this award. To do so, you should tick Part 3 on the form. Importantly, you can only claim an award of costs on specific allowable expenses. These are outlined in the Trade Mark Regulations 1995, and include the cost of:
- preparing, receiving and perusing the Notice of Opposition;
- preparing, receiving and perusing evidence;
- hiring agents;
- having professional legal representation, e.g. fees;
- attending a hearing in court, if your matter goes to a hearing; and
- remunerating people summoned to the proceedings.
What Happens if I Do Not File a Notice of Intention to Defend?
There are several risks you take by failing to file a notice of intention to defend. Some potentially negative outcomes include that your:
- trade mark application will lapse; or
- international trade mark designating Australia as a registered country (IRDA) will not be protected.
On the other hand, if you made a non-use application that has been opposed, not filing a notice may result in the other party’s trade mark remaining:
- registered in Australia; or
- protected overseas, if relevant.
This means that if you want to register a trade mark that may be alike to the other party’s, you will not be able to.
Continue reading this article below the formAre There Deadlines I Need to Follow?
You must file your notice of intention to defend within one month from the day on which IP Australia gives you a copy of the other party’s basis for opposition. This is called a statement of grounds and particulars.
Time Extensions
If needed, you can seek an extension of time for filing a notice of intention to defend. It is important to realise that you must submit this application within specified timelines. These are within:
- two months from the end of the original deadline to file the notice of intention to defend (for opposition to registration matters); or
- three months of receiving the statement of grounds and particulars (for opposition to non-use removal matters).
However, the Registrar must be satisfied there are sufficient grounds that justify an extension. For example, these grounds can be errors or omissions made by the other party or circumstances beyond your control.
Opposition to Registration – Should I Defend My Trade Mark?
If you wish to maintain your rights to your trade mark, you might decide to contest the opposition. This is where the filing of a Notice of Intention to Defend becomes crucial.
However, you may also wish to consider the risks of losing the case and how much it will cost to re-brand. For example, if you have recently started developing your brand, it may be more practical to re-brand instead of defending the trade mark. However, if you have a well-established business, you may want to continue defending your trade mark.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Registering your trade mark ensures that you can effectively protect your brand. Similarly, eliminating competitors’ marks that have not been used reduces your chances of registering a mark similar to theirs. However, when make a non-use application against another party or apply to register your own trade mark, they can oppose these actions. To respond, you must submit a notice of intention to defend. To properly do so and strengthen your trade mark registration, you should:
- ensure you comply with all formalities and information requirements;
- apply for an award of costs if relevant;
- follow given deadlines carefully; and
- consider the benefits of defending your trade mark registration compared to re-branding.
If you would like assistance regarding filing a notice of intention to defend, contact our experienced trade mark lawyers 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.
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