If you discover a new trade mark application that conflicts with your existing mark, you can object the registration. To prevent the registration of a conflicting mark, you must first file a notice of intention to oppose (NIO) during the trade mark application’s advertisement period. Following the lodgement of the NIO, you must lodge a statement of grounds and particulars (SGP) which will detail the grounds of your opposition. This article will outline how to lodge your SGP and undertake trade mark opposition proceedings, so you have the best chance at successfully opposing the conflicting trade mark.
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Why Might I Want to Oppose a Trade Mark?
Instigating trade mark opposition proceedings is both a commercial and legal decision. If a confusingly similar trade mark achieves registration, it could damage your brand’s image and reputation. However, you must determine whether the costs you could suffer will outweigh the costs of the proceedings.
Participating in trade mark opposition proceedings can cost your business more than $10,000. Also, if you are unsuccessful, the winning party may be able to recover some of their costs from you. Therefore, you may want to instigate trade mark proceedings if:
- the applicant’s accepted trade mark application is too similar to yours;
- the applicant’s mark is too generic and likely to be needed by other traders in the industry;
- you believe deception and confusion will arise between your brand and the new application; or
- the trade mark applicant is not the true owner of the trade mark.
What are the Legal Grounds Available to Oppose a Trade Mark?
In an SGP, you can set the grounds for opposing the conflicting trade mark. You are required to use a prescribed form provided by IP Australia. If you do not file the SGP within one month after filing the NIO, the opposition proceedings will end, and the applicant’s mark will proceed to registration.
To successfully oppose a trade mark, you must establish one or more of the grounds below:
| Ground | What Should You Address? |
| The trade mark cannot distinguish the applicant’s goods or services. | You should include a justification for why other traders would need to use the trade mark in the course of ordinary trade. |
| The opposed trade mark is substantially identical or deceptively similar to another. | You should provide a list of trade mark numbers upon which this opposition is based. |
| The trade mark is the same or similar to yours. | You should include details of the mark’s first use, the earlier trade mark number and whether the use of the mark has been continuous. |
| The applicant is not the owner of the trade mark. | You must either show when and how the trade mark was first used (registered or unregistered) and concerning what goods or services. You should also explain why the trade mark applicant does not have rights to the mark. |
| The trade mark is similar to a trade mark that has acquired a reputation in Australia. | You must identify that the trade mark (registered or unregistered) has acquired a reputation in Australia, the goods or services that have this reputation and whether the date of first use is before the priority date of the opposed mark. |
| The trade mark is scandalous or contrary to law. | You should provide evidence to establish that the trade mark contradicts the law. For example, under the Copyright Act 1968 (Cth). |
| The trade mark is likely to deceive or cause confusion. | You should explain the confusion arising or explain why the trade mark is likely to deceive or cause confusion. |
| The applicant does not intend to use the trade mark. | You must provide evidence to support your belief that the applicant has no intention to use the trade mark. |
| The application was made in bad faith. | You must provide information on why the application has been made in bad faith. |
| The trade mark contains a false geographical indication. | You must specify the geographical location and detail what goods or services are being recognised. |
| The trade mark contains a prohibited or prescribed sign. | You must include details of a prohibited or prescribed sign. |
| The application is faulty. | You must provide details of the faulty representation, material or amendment. |
| The certification trade mark is not distinguishing certified goods or services. | You must show why the certification trade mark cannot distinguish the certified goods or services from those that are not certified. |
| Registration of a trade mark as a defensive trade mark. | You must show why there is an unlikely connection between the goods or services of the defensive application and the registered owner. |
Is it Worth Defending My Trade Mark?
If you have decided to oppose a trade mark, you should seek assistance from an intellectual property (IP) lawyer. Defending opposition proceedings can be expensive, so it is essential to get legal advice to determine your prospects of success. It would help if you also remembered the winning party could apply for the losing party to pay a portion of their legal costs.
It is important to note that opposition proceedings only prevent applicants from obtaining their trade mark registration.
How Should I Go About Negotiations?
Once you have discussed your strategy with your legal team, consider approaching the owners of the mark you are opposing with a commercial resolution proposal. This proposal will require compromise from both parties to avoid costly and lengthy proceedings.
Trade mark opposition proceedings can often be a tool to guide a commercial conversation. Remember, any negotiation can occur in conjunction with the formal opposition proceedings with IP Australia.
How Do I Lodge the SGP?
After determining your grounds of opposition, your legal team will need to complete the SGP form. After filing your SGP, the applicant will have one month to lodge their notice of intention to defend (NID). The applicant must lodge the NID in time to ensure the trade mark in question is valid.
If the NID is lodged in time, you will need to lodge evidence to support your grounds of opposition. The applicant then has an opportunity to file evidence in response. If appropriate, you can then file evidence to refute their response. Either party may then seek a hearing. Otherwise, a decision will be made in writing 6-12 months after the final evidence is submitted.
Key Takeaways
You can decide whether to proceed with trade mark opposition hearings if you have become aware of a trade mark on the register that:
- compromises your business’ rights;
- is deceptively similar to your trade mark; or
- is contrary to the law.
If you are interested in discussing trade mark opposition proceedings with a lawyer or need assistance preparing an SGP, 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
You must file a Notice of Intention to Oppose within two months of the trade mark you wish to oppose being advertised as accepted. This is known as the advertisement period or the opposition period.
Yes, a government fee will be payable to IP Australia for filing a Notice of Intention to Oppose.
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