How to Respond to a Statement of Grounds and Particulars

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

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. 

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

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.