Can I Oppose A Trade Mark If No One Has Used It?

Under the Trade Marks Act, you can oppose a trade mark application if you can prove the applicant did not intend to use the trade mark. Nevertheless, you must file an opposition within two months of IP Australia advertising the trade mark application as accepted. Alternatively, if a trade mark owner has not used their trade mark for three years after their filing date, you may file a removal application. This article explains how you can initiate either opposition proceedings or the removal process of a trade mark that no one has used.

Opposition for No Intention to Use

When someone applies for trade mark registration, the law presumes the applicant intends to use the trade mark concerning all the goods and services nominated in their application. However, you can oppose trade mark registration if you can prove the applicant did not intend to use the trade mark.

To successfully oppose the trade mark, you must establish that the applicant lacked the intention to use their trade mark when they filed their application. Evidence of the applicant’s non-use after the filing date can help draw inferences about the applicant’s intention at the date of application.

However, as you can imagine, it would be difficult to prove the applicant has no intention to use the trade mark. Intention refers to someone’s ‘state of mind’, which cannot be easily established. In the past, oppositions relying on this ground were successful because the trade mark application raised no counter-evidence of their intention or concedes. This is to say you should seek legal advice before undertaking trade mark opposition on this basis.

The Opposition Process

If you can satisfy the elements above, you must file your notice of intention to oppose within two months of IP Australia advertising the trade mark application as accepted. When filing the notice, you must also pay a fee of $250 to complete the process. 

Within one month of filing a notice of intention to oppose, you must file a statement of grounds and particulars. In addition, you must identify the legal ground on which you base your opposition. After filing this, IP Australia will notify the trade mark applicant of your opposition.

However, within one month of receiving your statement of grounds and particulars, the trade mark applicant can defend the opposition by filing a notice of intention to defend. If the trade mark applicant does not file a defence, their trade mark application will lapse, and the opposition will discontinue.

If the trade mark applicant files a defence, the next step in the opposition process is evidence. This is where both parties exchange evidence to support their grounds for and against the opposition.

Once the evidence stages have ended, and if both parties have paid for either a hearing or a decision to be made, the Registrar must decide whether or not a particular opposition ground was deemed to be established. The Registrar can refuse the application to register the trade mark for some or all the goods and services listed in the application.

Removal For Non-Use

An application to remove for non-use differs from trade mark opposition in that an application for removal takes place long after IP Australia has registered a trade mark.

To successfully remove a trade mark from the Register, you must prove that:

• on the day the applicant filed for trade mark registration, they had no intention to use the trade mark in good faith; or
• that the trade mark has remained registered for a continuous period of three years, but at no time during that period did the trade mark owner use the trade mark in Australia concerning the goods and services to which the application relates.

No Intention to Use In Good Faith

To show that the trade mark owner lacked the intention to use their trade mark in good faith, you must submit evidence of the owner’s lack of good faith concerning the trade mark. Similar to what is mentioned above, it would be difficult to prove the applicant has no intention to use the trade mark in good faith.

Additionally, the owner must have used the trade mark only one month preceding your application to remove the trade mark.

No Use For A Continuous Period of Three Years

Under this ground, you must prove that the trade mark owner has not used the trade mark for a continuous period of three years. However, even the slightest use of the trade mark during this period can be fatal to your claim. 

In this sense, the owner must not have used the trade mark at any time within the specified period ending one month before your application to remove the trade mark.

If you want to file a removal application that alleges the applicant has not used the trade mark for three years, you must file the removal application:

• five years after the trade mark filing date if the owner filed their application before 24 February 2019; or
• three years after the trade mark’s particulars were entered on the register if the owner filed their application on or after 24 February 2019.

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Key Takeaways

You can oppose a trade mark application on the basis that the trade mark applicant does not intend to use the trade mark. You can initiate the opposition within two months after IP Australia advertises the trade mark application as accepted. Alternatively, if the trade mark owner has not used their trade mark for three years after their filing date, you may file a removal application. Since opposition and removal can be quite complex, it would be wise to seek legal advice before taking action for non-use. 

If you need assistance opposing 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.

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