Trademark Opposition.

In Australia, a trademark opposition refers to the situation where a trademark is opposed by another party via a legal proceeding at IP Australia, the government body in charge of trademarks.  It is the formal process of lodging an opposition to the validity of trademark in an attempt to remove it from the Trade Marks Registry.  Oppositions take place at IP Australia.

A trademark dispute, on the other hand, generally refers to the situation where one party is arguing that another is infringing their trademark by using it in an illegal manner on goods or services in the marketplace.  Such an action takes place through the court system.

The below is a guide to assist you in understanding the basics of a trademark opposition and the process involved.

Why would someone oppose a trademark?

The purpose of an opposition is to not allow the opposed trademark to be a formally registered trademark, with all the legal rights that would entitle the owner of the trademark.  Most oppositions are filed by:

  • A direct competitor.
  • A large corporation, who while not a direct competitor, takes their trademark rights very seriously and will file oppositions against recently accepted trademark applications even though on the face of it they do not appear to compete.
  • A party who has had their own trademark application rejected by IP Australia on the basis of a trademark prior in time, and so is seeking to oppose that earlier trademark to clear the way for acceptance of their trademark application.

A defended opposition to a trademark can only ultimately be successful on legal grounds.  

There is no requirement in Australia for someone to have ‘standing’ in order to initiate an opposition by filing a notice of opposition against a trademark.

Common Trademark Opposition Questions

An opposition begins with a party filing a Notice of Intention to Oppose the trademark.  

There are two types of opposition, and which type needs to be selected in the notice.  The first, is an opposition to a trademark application going forward to be accepted as a registered trademark.  The second, is an opposition to an already registered trademark, claiming that it has not been used in the marketplace for the last 3 years and should be removed from the register.  

A successful opposition in both cases will result in the trademark in question not being a registered trademark.

In Australia, any party can file an opposition with to a trademark application within the 2 months opposition period from when it has been accepted by the government (IP Australia).  If no opposition is lodged in this time, the option to do so is lost, and the trademark application will proceed to registration.

In the case of a removal for non-use, this opposition can be filed at any time once the trademark in question in more than 5 years old.

Two months.  As outlined above, this two month period begins from the trademark acceptance date at IP Australia.

This depends on you.  At the minimum, you should issue the Notice to Defend to ensure your trademark does not lapse by default.  It may also be useful to send a letter from a lawyer outlining any flaws in the claims of the other party.

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What are the grounds of opposition?

As discussed, there are two main types of opposition proceedings.  The first is opposing a trademark application that has been filed and accepted but has yet to be registered.  The second is a non-use removal proceeding against an already registered trademark.

Grounds of opposition against a trademark application 

A trademark opposition can only be on specified legal grounds, and these grounds are laid out in sections 39 to 62A of the Trade Marks Act 1995 (Cth).  Some of the most common trademark opposition grounds are:

  • The trademark is identical or very similar to another prior in time registered trademark in Australia (section 44).
  • Deception or confusion is likely because of the reputation of another trademark in Australia (section 60 and section 42).
  • The trademark applicant is not the true owner of the trademark (section 58).
  • The trademark is too descriptive of the goods or services to which it relates (section 41).
  • The trademark application was made in bad faith (section 62A).

The legal principles and precedents to these grounds are somewhat complex, but a good overview can be found in IP Australia’s Examiner’s Manual via these two links:

For the grounds under sections 39 – 44, read here

For the grounds under sections 58 – 62A, read here.

Non-use opposition grounds 

This ground applies where an existing registered trademark has not been used in Australia in the last 3 years (section 92), such that it is then liable to be removed for non-use. 

What is the opposition process?

A diagram of the timeline and stages of opposition proceedings is provided in the diagram below.  

A trademark opposition begins with a a Notice of Intention to Oppose.  In response to this, the owner of the opposed trademark must file a Notice of Intention to Defend, and if not, the trademark will lapse.  

Both these notices happen fairly quickly (2-3 months start to finish) and contain little formal legal arguments between the parties, and the opposition has commenced.   This then begins the evidence and decision phases, which have a longer timeframe (3-9 months) and normally more substantive legal work.

Then a decision is ultimately made at IP Australia, either with a hearing or with no hearing, based on all the material before the decision maker.

Here are more details.

1. Notice of Intention to Oppose.

  • Filed by the Opponent. 
  • Must be filed within 2 months from the acceptance date of the trademark application.  
  • A Statement of Grounds and Particulars must be filed within 1 month of the Notice. It sets out grounds and basic facts that the opponent relies on to support the opposition.  Once the grounds are elected, no further grounds may be added at a later date.
  • In the case of non-use removals, it can be filed any time after the trademark is 5 years of age.  No separate Statement of Grounds is required.

2. Notice of Intention to Defend

  • Filed by the Owner of the opposed trademark.
  • Must be filed within 1 month of the owner being given the Notice or Statement of Grounds and Particulars. The owner must file a Notice of Intention to Defend, as failure to do so will result in the lapsing of the opposed trademark.  It is therefore critical.
  • If filed, the evidence phase begins.

3. Evidence

  • Usually filed by both Opponent and Applicant.  Timeframe: 3 – 9 months.
  • The evidence is crucial in most cases.  The first evidence is the Evidence in Support.  After that is filed, the other party will then be given time to provide its Evidence in Answer (if any), with a final Evidence-in-reply to that evidence allowed.
  • Evidence must be filed in declaratory form, and often includes things such as details of how the trademark is used, labels, signage, photographs of products, invoices, copies of advertisements and the like.

4. Extensions and Cooling Off Period?

  • Extensions of time to serve evidence are now fairly difficult to obtain.   In the absence of exceptional circumstances, it will be necessary for parties seeking extensions to show that they have made reasonable efforts to comply with relevant deadlines, and have acted ‘promptly and diligently’ at all times.
  • However, if both parties are in genuine settlement negotiations, they can jointly seek to enter a “cooling off” period, which can be requested at any time during the opposition, for 6 months to a maximum of 12 months.

5. Decision
Timeframe: 6 – 12 months.  After all the evidence is in, the Opposition may proceed at the election of the parties by either:

  1. A hearing: whereby the parties may attend and make oral and written submissions.
  2. No hearing: only written submissions.  The parties only file written submissions and the decision is then based on those submissions, the law and the already filed evidence.
  3. No hearing: no written submissions.  You do not file written submissions but other party may. The decision is then based on the law, the already filed evidence, and other party’s written submissions if they did so.

The decision is made by a Delegate at IP Australia (the decision- maker similar to the position of a judge at IP Australia). 

Either party may appeal the decision of a Delegate to the Federal Court of Australia within 21 days of the decision.

Common Trademark Opposition Questions

6 – 18 months until a withdrawal or decision.

Yes.  Whether your trademark is being opposed or you are opposing another party’s trademark, very often it is possible to come to an agreement that suits both parties.  Examples include co-existences agreements, consent letters or deeds guaranteeing that one party will not use the trademark in a certain way.

This depends very much on the particular circumstances.  However, given that the other party (assuming it is your trademark being opposed) is now is aware of your brand, once your trademark is withdrawn, along with the legal rights it would have provided, you are likely to receive a letter containing legal threats.  For this reason, prior to a withdrawal an agreement to settle would be more preferable which may allow things such as you being able to sell remaining stock.

If you are the owner of the opposed trademark and you ‘lose’ the opposition at IP Australia, then your trademark will be cancelled.  If you are the opposer and you lose, then the other party’s trademark will remain on the register.  The loser will have to pay costs.  However, costs at IP Australia are much lower than court cost and are usually between $500-$3000.

This depends on how long the case goes on and what work is required to be done.  For a typical opposition, 90% of legal costs for opposition matters with McIntosh IP are between $1,500 – $3,000, and rarely more.

Get Good Advice

It is crucial that you get good advice in an opposition proceeding. The best advice will be from a trademark attorney or lawyer who is a specialist in trademarks. And because trademark oppositions are conducted at IP Australia and not a typical court, the fees are probably much less than you would expect. 

While you are permitted to represent yourself during an opposition proceeding, it is not advisable.  Trademark owners tend to present evidence or ‘legal’ arguments that are not relevant and do not give the decision-maker the power to rule in their favour, even if they are sympathetic to their case.

As IP Australia states; “Trademark oppositions can be lengthy, complex and costly, particularly if you are the unsuccessful party. If you are considering filing or defending an opposition, it may be in your interest to first seek the advice of a registered trademark attorney, a qualified trademark agent, or a solicitor with expertise in trademark matters.”

As a specialist, McIntoshIP can provide you with a well-considered legal advice as to your trademark opposition matter. We will be pleased to provide you with a written quote once we understand your particular case and the work it will involve.

Take home points:

  • Trademark oppositions are legal proceedings to prevent (or remove) the registration of a trademark.  The proceedings occur at the IP Australia government department.  In formality, fees and rules, IP Australia proceedings are like tribunals rather than courts.
  • A trademark opposition is not a trademark dispute or trademark infringement matter, which would involve claims of illegal use of a trademark on goods and services in the actual marketplace.
  • An owner of a trademark that is attacked must file a Notice to Defend.
  • For an defended opposition of a trademark to be successful, it must be on legal grounds.  
  • Negotiated settlements are possible, and indeed common.
  • In some instances, large corporations give their lawyers standing orders to file oppositions against anything even remotely similar to their trademarks, regardless of the legal merit of the case.   For this reason, large corporations are not always successful.
  • The fees to run a full opposition with McIntosh IP start from $1,500 with 90% of cases being less than $3000.

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