As a trade mark owner, you have a responsibility to defend and enforce your trade mark rights. Your competitors may lodge applications for a trade mark that is deceptively similar to your own. To prevent the registration of conflicting trade marks, you may need to oppose the other party’s trade mark. The registration and resolution of minor trade mark disputes occurs through IP Australia, Australia’s intellectual property overseer. This article will set out the timeline and processes that occur in trade mark opposition hearings.
What is an Opposition?
An opposition occurs if one party disagrees with the registration of another party’s trade mark. You can oppose a trade mark once IP Australia has accepted an application for trade mark registration.
Any party may oppose the registration of a trade mark application. However, oppositions are most often filed by a trade mark owner who believes the opposed trade mark is deceptively similar to their trade mark.
What is a Trade Mark Opposition Hearing?
You can commence opposition to an application by paying a $250 Government fee and submitting your notice of intention to oppose during the advertisement period. This is the period where, after a trade mark application is conditionally approved by IP Australia, the application is advertised in the Official Journal of Trade Marks for two months. Shortly after you have submitted your notice of intention to oppose, you must then file a Statement of Grounds and Particulars (SGP). This statement outlines the reasons supporting your opposition and any relevant facts or details. Each party may then submit their evidence during the evidence stages and request a hearing before an IP Australia hearing officer. Once this hearing stage is complete and the parties pay the relevant fees, the officer issues a decision.
Continue reading this article below the formWhat Happens at a Hearing?
After a hearing is requested, a hearing date will be scheduled and set down in the IP Australia Canberra office. You can attend the hearing in person, by phone or by video conference. Additionally, you may attend the proceedings with a legal representation. Otherwise, you may also choose to represent yourself in the hearing.
Before the hearing, the Hearing Officer will instruct you on how they should write and file their submissions, or arguments. The written submissions will guide and assist the Hearing Officer while you make your verbal argument at the hearing. You can file your written submissions through IP Australia’s online platform before the hearing.
The hearing is an opportunity to present the argument you have already made in prior submissions. This is also an opportunity to emphasise to the Hearing Officer the crucial elements of your case and answer any questions they may have.
Are Appeals Possible?
The Hearing Officer will not make a decision during the hearing. Instead, you should receive the result and written directions within three months of the hearing. These directions set out the steps you and the other party must follow now that the matter has concluded.
However, you and/or the other party may appeal the decision. The party seeking to appeal the decision has 21 days to do so. You can appeal the matter to the Federal Court or the Federal Circuit Court, in which case the opposition process will start again.
The Opposition Process Overview
The table below summarises the key stages of the opposition process.
| Stage | Applicant | Opponent (You) |
| Trade Mark Application | The applicant files a trade mark application. | |
| Opposition Proceedings Instigation | You file a notice of intention to oppose the advertisement period. | |
| The applicant files a notice of intention to defend, which responds to legal proceedings initiated against them. | ||
| You file an SGP within one month of the notice of intention to oppose. | ||
| Evidence | You submit evidence in support within three months of the notice of intention to oppose. | |
| The applicant submits evidence in response within three months of receiving the evidence in support. | ||
| You may submit evidence in reply within two months of receiving the evidence in answer. | ||
| Hearing/Decision | Either party can request a hearing. Otherwise, only the written submissions and evidence will influence the final decision. | |
| Appeal | If either party is not satisfied with the result of the hearing, they may have the option to file an appeal. Valid grounds for appeal may include: errors in the law’s application;an irregularity in how the hearing was carried out; or significant factual errors that occurred during the hearing. Simply disagreeing with the outcome is not a sufficient reason to file an appeal. | |
Overall, the process of opposing a trade mark application requires you to strictly follow the time frames set out by IP Australia. By failing to submit evidence or a response on time, you may jeopardise your case. As such, you should remain organised and prepare the documents you wish to submit well in advance of any deadlines.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
As a trade mark owner, it is important to know how you can legally defend and enforce your trade mark. Trade mark opposition hearings are lengthy and costly as they require strategic arguments and carefully selecting evidence. You can choose to have an oral hearing if you believe this will help your position in the matter. Engaging a lawyer may help you understand your legal position and your likelihood of success.
If you need assistance in or would like to discuss trade mark opposition hearings, our experienced trade mark 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.
Frequently Asked Questions
If you believe IP Australia has accepted an application for a trade mark that is deceptively similar to your registered trade mark, you may want to consider obtaining legal advice and opposing that mark’s registration.
You can oppose a trade mark application when it has been conditionally accepted by IP Australia and is in its advertisement period. A trade mark is advertised in the Official Journal of Trade Marks for a period of two months.
We appreciate your feedback – your submission has been successfully received.
