As a trade mark owner, it is your responsibility to patrol IP Australia’s trade mark registry for the application of conflicting trade marks. In keeping an eye on the registers, you may find trade marks that are identical or similar to your mark.

To prevent the registration of a conflicting mark, you will need to file a notice of intention to oppose (NIO) during the trade mark’s advertisement period.  Following the lodgement of the NIO, you are required to lodge a statement of grounds and particulars to support (SGP). This is used to justify 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 removing the conflicting trade mark.

Why Might I Want to Oppose a Trade Mark?

Instigating trade mark opposition proceedings is a commercial decision as well a legal one. If a potentially infringing trade mark achieves registration, there are risks that your brand’s image and reputation could be damaged. However, you must weigh up if the costs that could be suffered will outweigh the costs of the proceedings.

Instigating 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 associated with the process from you. 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 Legal Grounds are Available to Oppose a Trade Mark?

In an SGP, you can set out the grounds of your opposition to 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 argue it on one (or multiple) of the grounds below:

Ground What Should You Address?
The trade mark is not capable of distinguishing the applicant’s goods or services. You should include justification on 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 the first use of the mark, 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 in relation to what goods or services. You could also explain why the trade mark applicant does not have rights to the mark.
The trade mark is similar to a trade mark which 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 is contrary to the law. For example, under the Copyright Act 1968 (Cth).
The trade mark is likely to deceive or cause confusion. You should provide an explanation of 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 is not capable of distinguishing the certified goods or services certified 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. Defended opposition proceedings are very expensive, so it is essential to get legal advice to determine the prospects of your case’s success. You should also remember the winning party can apply for the losing party to pay up to 70% of their legal costs.

It is important to note that opposition proceedings only prevent the applicant from obtaining the registration of their trade mark. If you want to prevent the applicant from using the conflicting trade mark even in an unregistered capacity, you will need to instigate trade mark infringement proceedings. This is a separate legal action and IP Australia does not determine it.

How Should I Go About Negotiations?

Once you have discussed your strategy with your legal team, you may consider approaching the owners of the mark you are opposing with a commercial resolution proposal. This proposal will require some level of compromise from both parties to avoid costly and lengthy proceedings. You may like to offer to withdraw proceedings if the applicant agrees to re-brand their business or change their trade mark’s classification.

Often, trade mark opposition proceedings can 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, you or your legal team will need to complete the SGP form.  After filing your grounds, the applicant will have one month to lodge their notice of intention to defend (NID). If the applicant does not lodge the NID in time, the trade mark in question will become invalid.

If the NID is lodged in time, you will need to lodge evidence your grounds of opposition. The applicant then has an opportunity to file evidence in response. If appropriate, you can then file evidence to rebut their response. Either party may then seek a hearing. Otherwise, a decision will be made in writing 6-12 months after the final piece of evidence is submitted.

Key Takeaways

You can decide to 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 law.

If you are interested in discussing trade mark opposition proceedings with a lawyer, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Sophie Glover
If you would like further information on any of the topics mentioned in this article, please get in touch using the form on this page.
If you would like to receive a free fixed-fee quote for a legal matter, please get in touch using the form on this page.