How Can I Oppose a Trade Mark?

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Table of Contents

• Grounds for Opposition
• Notice of Intention to Oppose a Registration
• Extension Requests
• Assessment of Your Opposition
• Removal for Non-Use
• Key Takeaways
• Frequently Asked Questions 

A trade mark brings with it a number of protections, including the exclusive rights to its use. As such, monitoring for trade marks that conflict with your trade mark is essential to maintain this protection. Similarly, competitors may aim to remove your trade mark for non-use. If you believe an approved trade mark application will present a business risk or disagree with a removal request, you must take action to protect your branding. This article will take you through how you can oppose a trade mark.

Grounds for Opposition

There are a number of reasons why you might want to file a trade mark opposition, including if:

• the trade mark is identical to or very similar to your trade mark;
• you have been using a similar or identical trade mark before the applicant applied for registration;
• you consider the applicant does not intend to use the trade mark; or
• you believe the owner of the trade mark is not its true owner.

You can oppose two key types of actions related to trade marks. These are an application to:

• register a trade mark that is advertised as accepted by IP Australia; or
• remove a trade mark from the register for non-use.

Notice of Intention to Oppose a Registration

The first step to oppose the registration of a trade mark is to file a notice of intention to oppose. This notice must be filed within two months of the trade mark you oppose being advertised as accepted. A $250 filing fee must accompany this notice.

Statement of Grounds and Particulars

You will also need to submit a statement of grounds and particulars to accompany your notice of intention to oppose. This statement must be filed within one month of the notice of intention to oppose being filed. 

Essentially, a statement of grounds and particulars sets out your case and the legal reasoning you are using to oppose the trade mark. You will eventually need to be support these grounds with evidence. A guide to completing the statement of grounds and particulars is available on IP Australia’s website. For example, consider you are opposing a trade mark because you have been using a similar or identical trade mark before the applicant applied for registration. In that case, you would need to provide evidence demonstrating that you first used the mark and that use has been continuous, such as in advertising and marketing materials.

Extension Requests

Suppose you need more time to file your notice of intention to oppose or submit your statement of grounds and particulars. In that case, you may be eligible for an extension of time in certain circumstances. This includes if:

• circumstances beyond your control mean you require more time;
• you or your agent has made an error; or
• IP Australia has made an error.

To apply for an extension, you will need to complete the relevant form and pay an official fee of $150 per month.

Assessment of Your Opposition

Upon filing your notice of intention to oppose and statement of grounds and particulars, the applicant (other party) will have the opportunity to defend the opposition by filing a notice of intention to defend. They have one month to do this after receiving your statement of grounds and particulars. 

If the applicant does not file a notice of intention to defend, their trade mark application will lapse, and your opposition will be discontinued. However, where a notice of intention to defend is filed, the next step in the process is the submission of evidence from both parties, which IP Australia will review when determining the outcome of your opposition. Once the evidence stages are complete, IP Australia will make a decision.

Removal for Non-Use

Although you can oppose accepted trade marks, competitors may try to remove your own marks for non-use. This arises when other parties argue that you have not used the trade mark and/or never had any intention to use the trade mark. Another party may file a removal application for non-use when:

• five years have passed since you filed the trade mark application (for trade marks filed before 24 February 2019);
• three years have passed since the trade mark’s registration date (for trade marks filed on or after 24 February 2019).

If you want the trade mark to remain registered, you must contest the removal by filing a notice of intention to oppose followed by a statement of grounds and particulars. The removal applicant must then file a notice of intention to defend. Both parties will then have an opportunity to file supporting evidence before IP Australia makes a decision. 

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

Download Now

Key Takeaways

Opposing another party’s proposed trade mark registration or application to remove your own mark for non-use is an important part of protecting your brand. When taking steps to oppose either of these actions, you must submit a:

• notice of intention to oppose and the applicable filing fee; and
• statement of grounds and particulars outlining the grounds of opposition. 

If you would like assistance regarding trade mark opposition, 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.   

Frequently Asked Questions