What does it mean if you have received a notice of intention to oppose your accepted trade mark? It means the registration of your trade mark is being challenged by another party, known as the opponent. It is now your responsibility to defend your trade mark or let it lapse. This article sets out what you should do if you receive a notice of intention to oppose your trade mark.

What is the Process For Lodging a Notice of Intention to Oppose?

If a person wants to oppose your use of a trade mark, they need to do so within two months of the trade mark’s advertisement in the Australian Official Journal of Trade Marks. To oppose your trade mark, they need to lodge a notice of intention to oppose application with IP Australia. This includes filing a statement of grounds and particulars (SGP). The SGP explains the grounds on which the person opposes your trade mark and the next steps. If an SGP is not filed, your trade mark will proceed to registration.

There are many reasons why another party might oppose trade mark registration. These include:

  • the opponent thinks an accepted trade mark application is too similar to their own;
  • your mark is too generic and likely to be needed by other traders;
  • the opponent believes deception and confusion will arise due to their reputation; or
  • you are not the true owner of the trade mark.

What Do I Do If I Receive a Notice of Intention to Oppose?

Once you receive a copy of the application, you will have a month to file a notice of intention to defend your trade mark. You do not need to pay a filing fee. If you need longer to respond, you may request an extension. However, these are only granted in certain circumstances.

It is your responsibility to defend your trade mark. If you do not submit your notice of intention to defend on time, your trade mark application will lapse. If you do file your notice on time, you will move to evidence proceedings. Here, the person who filed a notice of intention to oppose needs to produce evidence in support of their SGP.

Is it Worth Defending My Trade Mark?

When you receive the SGP, you should seek assistance from an intellectual property (IP) lawyer. It is essential to determine the prospects of your case succeeding as defended opposition proceedings are expensive.

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, you may want 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 is because re-branding may be detrimental to your reputation and the success of your business.

Furthermore, you should remember the winning party can apply for the losing party to pay up to 70% of their legal costs.

How Should I Approach the Negotiation Process?

To avoid costly and lengthy trade mark opposition proceedings, you may want to approach the opponent with a proposal. A proposal is an offer to end proceedings on a commercial basis. It often needs some level of compromise from both parties. For example, you may propose to:

  • co-exist in the Australian marketplace;
  • avoid operating in certain jurisdictions; or
  • amend your specification to avoid similarity.

The Opposition Process Overview

Stage You as the Applicant Another Party as the Opponent
Trade Mark Application You file a trade mark application.
Instigating Opposition Proceedings Files notice of intention to oppose in opposition period.
Files SGP within one month of notice of intention to oppose.
You file a notice of intention to defend trade mark within one month of notice of intention to oppose.
Evidence Files Evidence in support within three months of notice of intention to oppose.
You file evidence in answer within three months of evidence in support.
Files Evidence in reply within three months of evidence in answer.
Hearing or Decision Parties can request a hearing. Otherwise, the decision is made on the written records (6-12 months are the final round of evidence).

Key Takeaways

If you have received a notice of intention to oppose or an SGP, you should seek assistance from an IP lawyer. They will help you understand your legal position and the prospects of success in relation to your trade mark. It is also important to consider negotiating with the opponent if your chances of succeeding are not as high. If you have any questions, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Sophie Glover
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