What is a trade mark opposition?

Your guide to trade mark oppositions

Once your trade mark is accepted by IP Australia, there is a two month window where a third party can object to your trade mark application. Alternatively, someone might be trying to register a trade mark that you are concerned about. In that case, you might need to file an opposition to that trade mark application to protect your own brand.

There are other types of trade mark oppositions, such as opposing a trade mark removal where a third party claims your trade mark hasn’t been used.

What reasons can someone oppose a trade mark?

There are certain reasons that a trade mark can be opposed including that the trade mark:

• is identical or deceptively similar to another trade mark;

• is likely to cause confusion;

• can’t distinguish the applicant’s goods or services from other traders;

• will not be used by the applicant;

• was registered in bad faith; and

• is scandalous or contrary to law.

When can a trade mark application be opposed?

A trade mark application can only be opposed in the two months after acceptance is advertised. If an opposition is not filed by that deadline, the process to prevent a trade mark registration is much more costly and time consuming.

What is the trade mark opposition process?

First, a notice of opposition needs to be filed within the two month period after a trade mark is advertised for acceptance. The opposing party also needs to file a statement of grounds and particulars, which details in summary form the reasons why a trade mark application should not be accepted. Depending on the reasons for opposition, the opposing party might also need to provide supporting evidence.

The trade mark applicant then needs to decide whether they will defend the opposition. If the applicant does not defend it, the trade mark application will lapse and will not be registered. If the trade mark applicant does defend the opposition, they will need to file a notice of intention to defend and gather supporting evidence.

If the third party is successful in opposing the trade mark application, the application will be rejected. If the third party is unsuccessful, the trade mark will be registered.

What should I do if my trade mark application is opposed?

If your trade mark application is opposed and you want to defend it, you can seek the help of a registered trade mark attorney to assist in the opposition process. Often, these oppositions can be settled commercially without exorbitant costs.

Have a question about a trade mark opposition? Reach out to me for a no-obligation chat.