Have you recently received a trademark notice of opposition from IP Australia? It can be concerning to receive this letter, particularly if you have already moved forward with the trademark. However, the good news is that you may have options to successfully defend the opposition.
Who has the right to oppose a trademark registration?
Any party can oppose the application for registration of a trademark if he/she/it (business) has one or more grounds to do so, (grounds detailed below). What is most interesting, and some might say irritating, is that the opposing party does not need to own a registered trademark of their own to do so.
How much time do I have to defend a trademark opposition?
There is a very tight timeline for you to have filed what is called a Notice of Intention to Defend. You only have one month from the date of IP Australia’s notification that the opposing party has filed something called a Statement of Grounds and Particulars.
If you do not take steps to defend the opposition within this timeframe, your application may be unsuccessful, which will mean you will not be able to register your trademark.
What happens next in the process?
If you elect to defend the opposition, after filing your Notice of Intention to Defend, you will need to collate relevant evidence to support your defence. You have 3 months from the date of IP Australia notifying both you and the opposing party that they have received the other party’s evidence.
You will need to provide highly relevant evidence to defeat the opposition and provide high-quality legal submissions. The nature of the evidence you should submit will vary, depending on the grounds and evidence put forward by the opposing party.
For example, you may need to include evidence that demonstrates that you are the rightful owner of the trademark (e.g., that you or a legally recognised predecessor adopted and used the mark before any other party in Australia). This evidence can include information about how you came up with the trademark and how you have used it historically in your business.
At the end of the evidence stage, there may or may not be a hearing. Either party can request a hearing to present their case. This is where spoken or written submissions are made to support a position, and a decision is then made by an IP Australia Hearing Officer.
If there is no request for a hearing, a decision is made based on the evidence submitted and both parties are notified.
What are the legal grounds for opposing trademark registration?
A party can oppose the application for registration of a trademark within 2 months of when the mark has been accepted and advertised by IP Australia.
Why might someone wish to object to the trademark you have applied to register?
There are a number of legal grounds for why someone may be able to oppose the application for registration of a trademark. The opposing party may perceive that your trademark is:
- Not capable of distinguishing the goods or services
- Deceptively similar to another mark
- Likely to deceive consumers or cause confusion in the market
- Similar to another mark which has acquired a reputation in Australia as scandalous or contrary to law (for example, misleading and therefore a breach of the Australian Consumer Law)
To be confident about whether you should embark on the process of defending the opposition of your trademark, seek advice from a specialist IP or trademark lawyer first. A good IP lawyer will ask you questions to learn about your circumstances and provide advice to help you decide if proceeding is wise and what the best strategy would be to defeat the opposition.
Before you file a Notice of Intention to Defend
If you are faced with an opposition against your trademark application, you will always have a better chance of success with these matters, when you seek specialist advice, first.
It is wise to have a specialist review all documents relating to the opposition, to advise you of the important deadlines in the opposition, and help you prepare and file your documents in preparation for the next steps.
In certain circumstances, it may be beneficial to have a specialist IP lawyer involved to enter into negotiations with the other side to assist you in trying to reach a commercially sound decision with the other party.
At the very least, seek advice early before you submit your Notice of Intention to Defend, so you are well-informed and can start the process with clarity and confidence.
Having access to specialist insights and advice about what to submit to IP Australia as part of this process is the best way to get a successful outcome.
This process is technical, and the timelines are tight. However, you intend to manage this process, ensure you do not miss any deadlines to file the required documents, as it will put your case at risk.
We invite you to book a complimentary 30-minute call with either Brigit or Zan, co-founders of Level Up Legal and experts in trademark disputes. If you have received a trademark notice of opposition, they can review your case and advise you on the prospect of success while considering your commercial needs. Book your complimentary call here.
