Trademark Opposition
When IP Australia accepts your trademark application, it is not automatically registered. Instead, it is published in the Australian Trade Marks Journal for a two-month opposition period. During this time, any person with legal standing may file a notice of opposition to challenge your mark’s registration or, in the case of an International Registration Designating Australia (IRDA), the extension of protection in Australia.
An opposition is a formal legal proceeding governed by the Trade Marks Act 1995 (Cth) and the Trade Marks Regulations 1995 (Cth). Receiving a notice of opposition does not mean your application will be refused, but it does mean you must act quickly to protect your rights.
Common Grounds for Trademark Opposition
Oppositions are typically lodged on one or more of the following grounds:
1. The proposed trademark is identical or confusingly similar to an existing registered or pending trademark.
2. The mark’s use would likely cause confusion or deception due to the reputation of another mark.
3. The applicant is not the true owner of the trademark.
4. The mark is subject to an international registration seeking protection in Australia.
Other types of opposition may also relate to procedural or administrative matters, such as:
1. Requests to amend a trademark application,
2. Extensions of time beyond the statutory period, or
3. Removal of a trademark from the register for non-use.
Formal Requirements for Opposition
To commence opposition proceedings, the opponent must file both:
1. A Notice of Intention to Oppose, and
2. A Statement of Grounds and Particulars (SGP).
The SGP outlines the legal and factual basis of the opposition. To be valid, it must substantially comply with the approved form under s 25C of the Acts Interpretation Act 1901 (Cth), and typically includes:
1. The opponent’s name and contact details,
2. The relevant trademark number,
3. The nominated grounds of opposition, and
4. Supporting particulars for each ground.
A delegate of the Registrar will assess whether the SGP is adequately particularised under regulations 5.8 and 17A.34B of the Trade Marks Regulations 1995.
Steps After Receiving an Opposition
If your application is opposed, IP Australia will provide you with the opponent’s materials, including any evidence lodged. You must then decide whether to defend the opposition.
1. If you do not defend, your application will lapse automatically.
2. If you intend to defend, you must file a Notice of Intention to Defend within one month of being served.
Failure to file this notice within the deadline is fatal to your application.
Defending Against an Opposition
If you proceed to defend your application, the opposition proceeds through a structured, evidence-based process:
- Opponent files Evidence in Support
- Applicant files Evidence in Answer
- Opponent files Evidence in Reply
After evidence is exchanged, the matter may proceed to a hearing. Both parties can make written or oral submissions before a hearing officer, who will decide whether the opposition succeeds.
Possible outcomes:
- If the opposition succeeds, your trademark application is refused.
- If the opposition fails, your trademark proceeds to registration.
Appeals
If you disagree with the decision, you may appeal to:
1. The Administrative Review Tribunal (ART) within 28 days of the delegate’s decision, or
2. The Federal Court of Australia, or
3. The Federal Circuit and Family Court of Australia, within 21 days of the delegate’s decision.
Professional Assistance
Trademark oppositions can be procedurally complex and legally technical. An intellectual property lawyer or trademark attorney can help you:
- Develop a clear IP protection strategy for your business,
- Conduct trademark searches to identify potential conflicts,
- Prepare, file, and defend your trademark applications,
- Draft licensing and confidentiality agreements,
- Monitor and enforce your trademark rights, and
- Manage international trademark filings.
Seeking professional advice early can save you significant time and costs down the track. Receiving a trade mark opposition can be daunting, but it doesn’t necessarily spell the end of your application. Understanding the process and seeking expert advice early can make all the difference in protecting your brand.
Strict time limits apply, so it’s important to act promptly.
Contact OpenLegal today at enquiries@openlegal.com.au or 1300 937 574 for a confidential consultation to discuss your situation and explore the best path forward
Ellie Hanna, Intern at OpenLegal
