What To Do If Your Trade Mark is Opposed

You’ve just received a letter from IP Australia advising you that your trade mark has been opposed. What do you do? Here’s your step-by-step guide on how to respond strategically and protect your brand.

1. Why Has My Trade Mark Been Opposed?

After your trade mark has been accepted by IP Australia, anyone can make a formal objection with IP Australia if they don’t agree with IP Australia’s decision to accept it. This is called an opposition. It happens during the two month window after your application is accepted and published, but before it’s officially registered.

Usually someone opposes a trade mark because it’s identical or very similar to another trade mark, an international registration is being sought in Australia, there’s a likelihood of deception or confusion because another trade mark existed beforehand, or they consider you’re not the true owner of the trade mark.

Oppositions can also be in response to an application to remove a trade mark, to amend a trade mark application, or to extend acceptance or registration timeframes.

2. Don’t Panic - But Act Quickly

The first deadline is critical. After you receive the notice and later the Statement of Grounds and Particulars from IP Australia, you have two months to file a Notice of Intention to Defend the opposition. If you miss it, your trade mark will be removed.

3. Carefully Review the Grounds of Opposition

Some grounds are stronger than others. For example, if the other person claims they have prior use of a trade mark, they may need to submit substantial evidence to prove this.

4. Assess Your Commercial Risk

Ask the following questions:

• How important is this brand to your business?

• Would rebranding be cheaper than fighting the opposition?

• Is the opponent a big competitor or a large company with deep pockets?

• If they are a large company or competitor, do they have a reasonable legal position?

• Could there be a middle ground to be negotiated with the opposing party?

5. Prepare Your Evidence Strategically

In the evidence you submit, you could include:

• Proof of your use of the trade mark;

• Marketing materials;

• Sales data;

• Consumer recognition (especially on social media);

• Explanations of how your trade mark differs from theirs.

At this stage, it’s important to get a trade marks professional to advise on your response to the opposition. They can guide you on what evidence will need to be included to form the strongest position. If you don’t include the right information and legal arguments at this point in the process, it is difficult to change or add to it later and this may detrimentally impact your chance of success.

6. Consider Negotiation or Settlement

Most oppositions are resolved without going through the full opposition process. Options to resolve the opposition can be:

• Entering into a co-existence agreement so both parties can continue operating under their respective brands;

• Narrowing your goods/services in the trade mark application;

• Amending your trade mark by filing an alternative version (for example, using a different logo or adding/removing words to your trade mark); and

• Commercial compromises that you’re comfortable with.

7. Get Professional Help

Oppositions are technical, involve legal arguments, and are evidence heavy. A trade mark attorney or intellectual property lawyer can help you:

• Understand your chances of success;

• Prepare persuasive legal arguments and evidence;

• Negotiate with the opponent; and

• Represent you at a hearing.

Although a trade mark opposition can feel daunting, it is a structured process with clear steps. With the right strategy and professional assistance, many businesses (even small businesses and sole traders) successfully defend their trade marks or reach a commercial resolution that protects their brand.

Need help with a trade mark opposition? Contact us for a no-obligation, free chat to discuss your options.