You have submitted a trademark application and are awaiting for the notice of acceptance. During that process, IP Australia issues you an official notification warning that another party has filed an intention to oppose your trademark request. What does this mean and what do you do?
As a trademark applicant you have a limited role in the opposition proceeding besides filing your intention to defend and gather evidence to dispute the opposition’s assertion. The outcome of an opposition is uncertainty for the trademark applicant as they are essentially left in limbo. Rather, the objection process is widely dependent on the opposition’s actions and their ability to establish valid grounds for their objection to your trademark.
Firstly, a trademark opposition is a formal objection to the registration of a trademark initiating a formal procedure that occurs before IP Australia. An objection is different from a trademark infringement proceeding.
There are a few reasons why a party will oppose your trademark registration, but typically they will be because:
- they think your accepted trademark application is too similar to their own; or
- they own a registered trademark and believe you are attempting to remove their trademark.
Upon filing your trademark application, IP Australia will examine your application and if your trademark meets all the relevant criteria a notice of acceptance will be issued meaning you are able to register. However, at that point, there is a two month window where third parties can oppose your trademark under the Trade Marks Act 1995 (Cth), which may prevent you from registering.
Notice of Intention to Oppose
During the two month period which is referred to as the ‘opposition period’, third parties that wish to object can file a notice of intention to oppose IP Australia. An opposition is commenced upon a third party filing of a notice of intention to oppose.
A Statement of Grounds and Particulars
After a notice of intention to oppose has been submitted, the next step is dependent on the opponents actions. Within one month of filing their notice of intention to oppose, they are required to file what is referred to as a statement of grounds and particulars for the procedure of objection to continue.
The purpose of the statement of grounds and particulars is to outline the reasons why the opponent believes the trademark should not proceed to registration. Essentially, it is the precise grounds of opposition, selected from the Trade Marks Act 1995 (Cth), which they wish to rely on during the opposition proceeding.
Notice of Intention to Defend
The objection process is time critical as meeting deadlines determine the prospect of the objection process. Thus, it is essential within one month of receiving the statement of grounds and particulars to file a notice of intention to defend.
Filing the document with IP Australia represents your response to the trademark opposition and signals your objection to the objection. This is a critical step because if you do not file a notice of intention to defend it will result in a default judgement in favour of the opponent. Therefore, your trademark application is automatically rejected.
Upon the initial documents being filed and forwarded between you and the other party by IP Australia, the evidentiary stage commences. Within three months of filing the intention to defend, the opposing party must submit evidence in-support of their objection also referred to as ‘evidence in answer’. The evidence will be provided in the form of a declaration containing information which supports the grounds of the opposition.
Indeed, as the trademark applicant you will be entitled to respond by filing your own evidence which provides material that aims to dispute the opponents assertions; referred to as ‘evidence in reply’. The evidence in reply must be confined to responding to the facts alleged in the opponents ‘evidence in answer’. Alternatively, where you do not have any relevant evidence to raise against the opposition, you should serve the opposing party with a copy of notice stating that no ‘evidence in reply’ will be relied upon.
Making the Decision
The evidence from both sides is exchanged between the parties and filed with IP Australia for assessment. After evidence is filed, IP Australia will make a decision. Whether the matter is to be decided on a written record or by a hearing is the choice of both parties.
IP Australia’s decision will determine whether the trademark is registered or not. Important to remember that while the opposition proceeding may seem simple it can be a very lengthy process. Sometimes taking up to two years before a decision is made. Indeed, if the decision is not in your favour it may be appealed within 21 days of the decision being made.
Why defend an opposition?
Ordinarily, your trademark is valuable as it is a commercial asset. It represents and distinguishes your brand. Thus, it is most favourable to have it registered given you have a commercial interest in protecting your brand. Take advantage of the right afforded to you as a trademark applicant to protest against an opposition. Particular, if the opposition has no real grounds for their objection.
While the procedure may be complex, it is far easy to pursue through IP Australia’s channels, rather than the court system.
In the event that an opposition is made to a trademark application, it is critical to file your notice of intention to defend by the prescribed deadline. Defending a raised opposition requires a strategic approach, one best managed by an IP specialist lawyer.