A crucial component of effective brand protection is preventing competitors from taking advantage of your goodwill and reputation by using trademarks that are too similar to yours. This can be done by filing an opposition, which is a formal objection to the registration of another party’s trademark.

This article will provide an overview of the Australian trademark opposition process.

When can I oppose a trademark application?

You might wish to oppose trademark application where:

• a competitor’s trademark is identical or deceptively similar to your own registered or unregistered trademark;
• a competitor’s trademark is incapable of distinguishing their goods and/or services from others in the marketplace;
• a competitor’s trademark is likely to deceive or confuse consumers because of the reputation acquired by your trademark;
• the trademark applicant is not the true owner of the trademark because you used the same mark before the date of application of the opposed trademark.

How does the trademark opposition process work?

Note that you can only oppose a trademark once it has been accepted for registration by IP Australia, meaning you cannot oppose a trademark if only an application for registration has been filed.

The trademark opposition process consists of a number of steps, each of which is subject to strict time frames (although extensions may be available in certain circumstances):

1. Notice of Intention to Oppose

You can initiate the opposition process by filing a Notice of Intention to Oppose within two months of the trademark you oppose being advertised as accepted. This must be supported by a Statement of Grounds and Particulars setting out the specific grounds you rely on for the opposition, which is to be filed within one month of filing your Notice of Intention to Oppose.

Note that your Statement of Grounds and Particulars does not require you to submit any evidence but, should you decide to include evidence in your filing, you may need to re-file this during the relevant evidence stage, or it may not be considered by the Delegate of the Registrar of Trademarks (= the Government Official who will decide the case).

2. Notice of Intention to Defend

In response, the trademark applicant can then file a Notice of Intention to Defend, which essentially provides that they intend to defend themselves against your opposition. If this is not done, the trademark application will lapse, and the opposition will be discontinued.

If a Notice of Intention to Defend is filed, the opposition process will then proceed to the evidence stages.

3. Evidence in Support

Once a Notice of Intention to Defend has been filed by the applicant, you must file Evidence in Supportof your opposition. This must be done within three months of receiving a copy of the applicant’s Notice of Intention to Defend.

4. Evidence in Answer

Once the trademark applicant has been notified of your Evidence in Support, they can submit Evidence in Answer responding to your Evidence in Support and/or in response to your opposition more generally. This must be done within three months.

If you do not file any Evidence in Support, the trademark applicant can still file Evidence in Answer to your Statement of Grounds and Particulars. This also must be done within three months of being notified that no evidence in support has been filed.

5. Evidence in Reply

This stage provides you with a final opportunity to file evidence responding to the applicant’s Evidence in Answer. This must be done within two months of being notified of the applicant’s Evidence in Answer.

After you have submitted your Evidence in Reply, both parties have one month to request a hearing on the opposition.

If no hearing is requested, a Delegate of the Registrar of Trademarks will make a decision on your opposition based on the evidence filed in the course of the opposition proceedings.

6. Hearings

If a hearing is requested, a hearing date will be set.

Hearings can be conducted with the parties in person, via telephone or video conference, or through providing written submissions. During these, both parties can make oral or written submissions to support their case and a Hearing Officer will determine the matter, taking into consideration each parties’ submissions and the evidence filed. The hearing officer’s decision can be appealed in the Federal Court or Federal Circuit Court.

What evidence do I need to support my opposition?  

The evidence you are required to submit to support your opposition will largely depend on the grounds for your opposition.

For example, if you oppose a trademark on the basis that you are the true owner of the mark and used it before the applicant filed to register the trademark, the following evidence is likely to be relevant:

• evidence of you using the trademark prior to the applicant seeking to register the mark;
• evidence that you have used the trademark for a continuous period;
• evidence of how you initially came up with the trademark.

All evidence must be in the form of a declaration.

How much does it cost to oppose a trademark?

The costs involved in the opposition process can vary significantly, and are depended on the specific circumstances of the opposition. Generally speaking, the more complex the case and the more evidence needs to be prepared, the higher the costs will be. There are also official fees payable as set out by IP Australia.

Conclusion  

It is your responsibility to monitor what trademarks have been accepted by IP Australia and determine if anyone has lodged to register a trademark that is very similar to yours. Opposing the registration of a trademark is also a complex, time-consuming and costly process. An experienced IP professional can help you stay on top of these and provide you with strategic advice on how you can best protect your brand from competitors.

If you wish to oppose a trademark application or if you are a trademark applicant and have received a notice of opposition, please do not hesitate to contact us.

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