Opposing the Registration of a Trade Mark

Posted on Jul 28, 2020 by Private: Sam Lewis   |   Categories: Intellectual Property

An opposition to a trade mark is a formal objection to that mark being registered.

Parties may choose to oppose a trade mark being registered for a variety of different reasons. For example, they may:

  1. believe a trade mark which has been accepted at examination is too similar to their own; or
  2. own a registered trade mark which another party is attempting to remove from the Register.

Once a trade mark application has been accepted, it will be published in the Official Journal for Opposition. This commences a two-month period for another person or company to file a Notice of Intention to Oppose the registration of the accepted trade mark.

If an opponent files a Notice of Intention to Oppose, that party then has one month from the day the notice was filed to also file a Statement of Grounds and Particulars relating to their opposition. In all cases, the statement of grounds and particulars must set out:

  1. the name and contact details of the opponent;
  2. the number of the trade mark to be opposed;
  3. one or more grounds of opposition (pursuant to sections 58, 58A, 59, 60, 61, 62(a), 62(b) and 62A of the Trade Marks Act 1995 (Cth)); and
  4. the facts and circumstances forming the basis for each nominated ground (referred to as “particulars”).

When the trade mark applicant receives the Statement of Grounds and Particulars from the opponent they then have one month to file their Notice of Intention to Defend the Opposition. If this Notice is not filed in a timely manner the opposition will be successful and the trade mark rejected.

Once a Notice of Intention to Defend has been filed the opponent then has three months from the day it is served the Notice to file its evidence in support. Finally, the trade mark applicant then has a further three months to file any evidence in reply and the opponent, another two months to file further evidence on which it intends to rely.

When both parties’ evidence has been filed, the parties will be given an opportunity to be heard.

This may be done by one or both of the parties requesting a hearing in person. A hearing officer will be allocated to the opposition and a hearing date for the opposition will be set. Both parties will file a summary of written submissions with the trade mark office before the hearing. The opponent must file its summary of written submissions 10 business days before the hearing. The trade mark applicant must file its summary of written submissions 5 business days before the hearing. The parties will then attend the hearing and make oral submissions in support of their case.

Parties may also elect for the opposition to proceed on the papers. This means that the parties are given deadlines to file written submissions as to why the opposition should be upheld or rejected. The hearing officer will then determine the opposition based on the evidence filed and the written submissions.

The hearing officer will issue a decision, including reasons for their decision, within approximately 3 months from the date of the hearing. The opposition may be successful and the trade mark application will be rejected. The opponent only needs to establish one ground of opposition to succeed. Alternatively, the opposition may be unsuccessful and the trade mark will proceed to registration.

The decision can be appealed to the Federal Court of Australia. A notice of appeal must be filed with the Federal Court within 21 days.