As a trade mark owner, it is your responsibility to patrol the Australian trade mark register for any conflicting trade marks. If you find a trade mark that is similar to yours, you can prevent registration of the conflicting mark by filing a notice of intention to oppose. You need to do so during the advertisement period of the trade mark application. This article explains how you can apply for a notice of intention to oppose to prevent someone from registering a similar trade mark, and therefore protect your exclusive right to your registered trade mark.

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

If you want to oppose someone’s registration of a trade mark, you need to do so within two months of the trade mark’s advertisement in the Australian Official Journal of Trade Marks. To oppose their trade mark, you 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 upon which you oppose the trade mark and the next steps.

There are many reasons why you might decide to oppose a trade mark registration. These include:

  • the applicant’s accepted trade mark application is too similar to yours;
  • the applicant’s trade mark is too generic and likely to be needed by other traders;
  • you believe that deception or confusion will arise if the applicant’s trade mark is registered; or
  • the applicant is not the true owner of the trade mark.

After you have filed the SGP, the applicant will receive a copy of it. They will then have one month to file a notice of intention to defend their trade mark. Once the applicant has filed their notice of intention to defend, the process will move to evidence proceedings. You will then need to produce evidence in support of the SGP and opposition of the trade mark. If you have not filed an SGP, the applicant’s trade mark will proceed to registration.

Is it Worth Defending My Trade Mark?

If you have decided to file a notice of intention to oppose a trade mark, 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 should also remember the winning party can apply for the losing party to pay up to 70% of their legal costs.

Furthermore, trade mark opposition proceedings are limited to preventing the applicant from obtaining the trade mark registration only. If you want to prevent the applicant from actually using the conflicting trade mark, you need to instigate trade mark infringement proceedings. These proceedings are a separate legal action to trade mark opposition proceedings and are not determined by IP Australia. Infringement proceedings can be taken out at the same time or before and after opposition proceedings.

How Should I Approach the Negotiation Process?

To avoid costly and lengthy trade mark opposition proceedings, you may want to approach the applicant 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 withdraw from opposition proceedings if the applicant re-brands or confines their trade mark use to a particular jurisdiction.

The Opposition Process Overview

Stage Another Party as the Applicant You as the Opponent
Trade Mark Application Files trade mark application.
Instigating Opposition Proceedings Files notice of intention to oppose in opposition period.
Submits SGP within one month of notice of intention to oppose.
Files notice of intention to defend within one month of notice of intention to oppose.
Evidence Submits evidence in support within three months of notice of intention to oppose.
Files evidence in answer within three months of evidence in support.
Submits evidence in reply within three months of evidence in answer.
Hearing or Decision Parties can request a hearing. Otherwise, the court makes a decision based on the written records.

Key Takeaways

If you find a similar trade mark, or one that compromises your business rights, you can consider filing a notice of intention to oppose the trade mark. However, you should seek assistance from a specialised IP lawyer who can help you assess whether doing so is right for you. Specifically, they can help you understand your legal position and prospects of success in the opposition proceedings. If you have any questions, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Sophie Glover

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