How to Respond to a Statement of Grounds and Particulars

October 18, 2018

If you have received a notice of intention to oppose (NIO) your trade mark, this means a third party wants to prevent your trade mark from being registered. The opponent may then follow up by lodging a statement of grounds and particulars with IP Australia.

In this article, we look at:

why someone may oppose your trade mark;
what a statement of grounds and particulars is; and
what you should do if you want to defend your mark.

Why Would Someone Oppose Your Trade Mark?

There are several reasons why someone may want to oppose registration of your trade mark. These reasons, called “grounds of opposition”, are detailed in the Trade Marks Act. The opponent has the responsibility to establish each ground they claim.

Grounds of Opposition

Ground of Opposition	Evidence Required from the Opponent
The mark is not capable of distinguishing your goods or services	Justification why other traders (without improper motive) would need to use the trade mark in the course of normal trade
The mark is identical or deceptively similar to an existing trade mark	A list of the trade mark numbers corresponding to similar marks
The opponent has earlier use of the same or similar trade mark	The opponent must identify: evidence of the first use of the mark; the earlier trade mark number; and whether they have used the mark continuously.
You are not the owner of the mark	The opponent must show: when the trade mark was first used, and in relation to what goods or services; or why you do not have good title or rights to the mark.
The mark is similar to one which has already acquired a reputation in Australia	The opponent must identify: the trade mark has acquired a reputation in Australia; the goods and services which the trade mark has a reputation for; and whether the mark was first used before the priority date of the opposed mark.
The mark is scandalous or contrary to law	Evidence why it is contrary to law
The mark is likely to deceive or cause confusion	An explanation of: the connotation arising from the trade mark; and why the mark is likely to deceive or cause confusion.
You do not intend to use the mark	Evidence of why you have no intention to use the trade mark
The application was made in bad faith	Evidence of why the application has been made in bad faith
The mark contains a false geographical indication	The opponent must specify the: region in which the geographical indication is recognised; goods for which it is recognised; and details of the origin of the opposed trade mark’s goods (if known).
The mark contains a prohibited or prescribed sign	Details of the prohibited or prescribed sign
The application is defective	Details of the defective representation, material or amendment
The certification mark is not distinguishing certified goods or services	Evidence of why the mark is not capable of distinguishing the goods or services certified by the applicant from those that are not certified
The mark was registered as a defensive trade mark.	Evidence of why there is an unlikely connection between the goods or services of the application and trade mark owner

Defending Your Trade Mark

Below, we take you through the different stages involved when someone opposes your trade mark registration and explain your available options.

1. Receiving a Statement of Grounds and Particulars

A statement of grounds and particulars is a document which the opponent files with IP Australia. It sets out their grounds of opposition, supported by material facts and details.

If you receive a statement of grounds and particulars, you have to decide whether you want to defend your trade mark or not. Accordingly, you should review each ground of opposition raised by the opponent and determine whether you can refute it.

However, it is a good idea to seek legal advice to understand your prospects of success as the:

facts of each opposition are extremely different and sometimes complex; and
process of defending your mark can be very costly.

If you decide to defend your mark, you must then file a notice of intention to defend (NID) your trade mark within one month of receiving the statement of grounds and particulars. Otherwise, your trade mark application will not proceed to registration.

While you can get extensions of time, IP Australia only grants these in special circumstances.

Tip: The decision to proceed with opposition proceedings is a commercial decision that you should make strategically.

2. Negotiation and Strategy

Once you have sought legal advice, you may then decide to approach the opponent with a proposal as part of your strategy. A proposal is an offer to end proceedings on a commercial basis.

Ultimately, it needs some compromise from both parties in order to avoid high costs and delays.

For example, you may like to offer to re-brand or to only use your trade mark in a particular region.

3. Lodging Evidence

If any negotiation is unsuccessful, the opponent must lodge further evidence for their grounds for opposition.

Once you receive this evidence, you will have an opportunity to file evidence in response. The opponent can subsequently file evidence in reply.

Either party may then seek a hearing. Otherwise IP Australia will make a decision based on the written records available, 6-12 months after the final round of evidence.

The Opposition Process Overview

Stage	Applicant	Opponent
Trade Mark Application	Files trade mark application
Instigating Opposition Proceedings		Lodges NIO in opposition period
		Files statement of grounds and particulars within one month of NIO
	Submits NID within one month of NIO
Evidence		Lodges evidence in support within three months of NIO
	Provides evidence in answer within three months of evidence in support
		Lodges evidence in reply within three months of evidence in answer
Hearing/Decision	A hearing can be requested by either party; otherwise, IP Australia makes a decision based on available evidence

Key Takeaways

If someone has opposed your trade mark and you have received a statement of grounds and particulars, you need to take appropriate steps to defend your mark.

Getting legal advice from the start will help you understand your legal position and prospects of success in opposition proceedings. Therefore, if you would like advice on commencing trade mark opposition proceedings, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

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