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.
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 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.
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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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 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.
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.
2. Notice of Intention to Defend
3. Evidence
4. Extensions and Cooling Off Period?
5. Decision
Timeframe: 6 – 12 months. After all the evidence is in, the Opposition may proceed at the election of the parties by either:
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.
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.
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.
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