Whereas the most common opposition in trademarking is opposing a trademark to be registered, there are in fact a few things that may raise opposition to in the whole process. You may choose to oppose a trademark that because it looks too similar to yours or you may be opposing someone else’s attempt to remove your trademark. Below, we examine the four types of oppositions that can be involved in a trademark registration process.

1. Opposing an Application to Register a Trademark that has been Accepted and Advertised

Once a trademark has been accepted, it will be advertised for three months to allow for any oppositions. Usually, oppositions will be raised at this stage if a trademark owner feels that the accepted trademark is too similar to theirs.

Opposition to the registration of a trademark here is initiated by a notice of intention to oppose, which must be filed within two months of the trademark being advertised. You must pay a filing fee along with the notice. Once this is filed, a statement of grounds and particulars should follow.

Under certain circumstances, it is possible to get an extension of time to file a notice of intention to oppose, e.g. if there has been an error or omission.

2. Opposing an Application to Remove a Trademark from the Register for Non-use

This occurs when somebody has made an application to remove your trademark for non-use on the basis that the owner of the trademark has not used it for three years, has not used it in good faith or did not have any intention to use the trademark.

You can oppose this by filing an intention to oppose followed by a statement of grounds and particulars. This opposition must also be filed within two months of the removal application being advertised, although you may also request an extension under certain circumstances.  

Further to this opposition, you can also file a notice of intention to defend, for which you must provide evidence. For example, in defending a removal for non-use, evidence can include recent use of the mark on a product.

Note that anyone can oppose a removal of a trademark, although the owner usually does it.

3. Opposing an Application for an Extension of Time of More than Three Months

Another type of opposition that you can file is in relation to time extensions requested for more than three months. Reasons to oppose could be that sufficient time has already been allowed or that a party would be adversely affected given the longer extension.

You can file your opposition by filing a notice of intention to oppose within one month from when the extension has been requested. It is then up to IP Australia to decide on the next steps.

4. Opposing an Application for an Amendment to a Trademark Application

Under the Trade Marks Act 1995 (Cth) section 65, amendments can be made to published trademark applications. This includes a variety of amendments, such as amendments to correct an error in the classification of goods or an amendment to add a new classification.

You can also oppose an amendment of a trademark application if you feel that you will be adversely affected. The process also starts by filing a notice of intention to oppose within one month of the request for the amendment being advertised. It is then up to IP Australia to decide on the next steps.

Key Takeaways

All oppositions begin with a notice of intention to oppose, and there are a few areas that allow you to file an opposition. Before filing an opposition, it is always best to consult an IP lawyer to determine that this is the best course of action to follow.

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Lachlan McKnight

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