As a trade mark owner, you have a responsibility to monitor the Australian trade mark register for applications which conflict with your trade marks. A trade mark application lodged by a competitor may be deceptively similar to your own. Consequently, to prevent the registration of conflicting trade marks, you will 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 sets out the timeline and processes which occur in trade mark opposition hearings.
What is a Trade Mark Opposition Hearing?
You can start opposing an application by submitting your notice of intention to oppose during the advertisement period. This is the two month period where, after a trade mark application is conditionally approved, the application is advertised in the Official Journal of Trade Marks for two months. You must then file a Statement of Grounds and Particulars (SGP), outlining the evidence supporting your application, and pay a lodging fee. Finally, each party must submit their respective evidence before a decision is finally reached.
Requesting a Hearing
Either party in a trade mark opposition proceeding can request a hearing. In this environment, you can make verbal and written submissions to support your case for a fee of $600. If no hearing is requested, an IP Australia Hearing Officer will make the decision purely based on the written record, such as by referring to written submissions and evidence you have submitted.
Generally, being the party who requests a hearing will place you in a stronger position.
What Happens at a Hearing?
The 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 barrister or trade mark lawyer. Otherwise, you may also choose to represent yourself in the hearing.
Before the hearing, the Hearing Officer will instruct the parties on how they should write and file their submissions. The written submissions will guide and assist the Hearing Officer while the verbal submissions are made 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.
Receiving a Result and Appealing
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 the matter has concluded.
However, you and 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
|Trade Mark Application||Applicant files a trade mark application.|
|Instigating Opposition Proceedings||Files notice of intention to oppose in advertisement period.|
|Files SGP within one month of notice of intention to oppose.|
|Evidence||Submits evidence in support within three months of NIO|
|Submits evidence in answer within three months of receiving evidence in support.|
|Lastly, the opponent may submit evidence in reply within three months of receiving evidence in answer.|
|Hearing/Decision||A hearing can be requested by either party. Otherwise, only the written submissions and evidence will influence the final decision.|
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 entire case. Consequently, you should remain organised and prepare the documents you wish to submit well in advance of any deadlines.
Trade mark opposition proceedings are lengthy processes that require strategic arguments and careful selection of evidence. Further, you can choose to have a hearing if you believe this will help your position in the matter. Therefore, getting a lawyer may help you understand your legal position and your likelihood of success.
Consequently, if you need assistance in or would like to discuss trade mark opposition hearings, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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