20th May 2021 - Jax Floro

As the owner of a trade mark, you are responsible to defend your trade mark rights. Therefore, you should know about the purpose and process of trade mark opposition proceedings.

It is important for you to be familiar with the complexities of trade mark oppositions so that you are properly informed in case someone opposes your trade mark or when you need to start opposition proceedings against the trade mark of another.

A trade mark opposition Process is the formal objection to the registering of a trade mark. It is only possible to oppose a registration after it has passed examination and has been accepted by IP Australia, never before. Be forewarned that oppositions can be tedious and costly. It is highly recommended that you engage the services of and take advice from a professional intellectual property expert.

We take a look at the four different types of oppositions and the Trade Mark Opposition processes that each involves.

Opposition to an Application to Register That Has Been Advertised as Accepted

A person has two months within which to file an opposition once a trade mark has been advertised as accepted. The grounds for opposition should only be those that are listed in the Trade Marks Act 1995 (Cth). Some of the most common reasons why someone would file an opposition are the following:

• The trade mark is identical or very similar to an earlier filed pending or registered trade mark or one that is internationally registered that is seeking, or has acquired protection, in Australia.
• The trade mark is likely to cause confusion or would interfere with the reputation of their trade mark in Australia.
• The applicant of the trade mark is not the true owner.

After a Notice of Intention has been filed, a Statement of Grounds and Particulars should follow within one month (the ‘Grounds’). The Grounds address what type of opposition proceeding is underway and the grounds for the opposition under the Trade Marks Act 1995 and the Trade Marks Regulations 1995.

• Trade mark not capable of distinguishing the applicant’s goods and/or services – Section 41
• Substantially identical / deceptively similar trade marks – Section 44 / Reg 4.15A
• Opponent has earlier use of the same / similar trade mark – Section 58A
• Applicant not the owner of the trade mark – Section 58
• Trade mark is similar to a trade mark which has acquired a reputation in Australia – Section 60
• Trade mark is scandalous or contrary to law – Section 42
• Trade mark likely to deceive or cause confusion – Section 43
• Applicant not intending to use the trade mark – Section 59
• Application made in bad faith – Section 62A
• Trade mark containing / consisting of a false geographical indication – Section 61
• Trade mark is / contains prohibited or prescribed signs – Section 39
• Application etc. defective etc. – Section 62
• Certification trade mark not distinguishing certified goods and/or services – Section 177
• Registration of a trade mark as a defensive trade mark – Section 187

Opposition an Application to Remove a Trade Mark from the Register for Non-use

These types of applications, also known as removal applications are usually grounded on one of the following claims:

• the owner of the trade mark has not used the trade mark for three years (at least 5 years must have passed since the filing date of the registered trade mark)
• the owner of the trade mark has not used it in good faith, or
• the owner did not have any intention to use the trade mark.

The non-use application should contain the following information:

• The number of the trade mark which is to be removed
• The name and address of the person applying for removal
• That applicant’s address for service in Australia or New Zealand
• The ground(s) for removal
• Whether the trade mark is to be removed for some or all of the goods/services
• Whether the applicant is aware of any court action pending in relation to the trade mark

The owner of the opposed trade mark can contest the claim by filing a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars within the stated time to oppose, for example, by providing evidence that the trade mark has been used with the stated time frame.

Although anyone can oppose removal applications, the owner of the trade mark usually defends it by filing an opposition proceeding.

Opposition to an Application for an Extension of Time of More than Three Months

IP Australia advertises applications for extension of time that asks for more than three months, in order to give other people an opportunity to oppose the validity of the extension. Again, oppositions to an extension of time must be filed within two months from the date the request was advertised.

The grounds upon which the opposition may be based are that sufficient time has already been given or that a party would be unfavorably affected by the longer extension.

IP Australia will then decide the outcome.

Opposition to an Application for an Amendment to a Trade Mark Application

Section 65 of the Trade Marks Act 1995 (Cth) allows amendments to be made to published trade mark applications. These amendments also include those amendments for the correction of an error in the classification of goods or an amendment to add a new classification.

Those who feel that they will be adversely affected by this amendment can file an opposition to this application within one month from the date the request has been advertised. IP Australia will then decide on the outcome.

Takeaway Points:

• It pays to be familiar with the intricacies of Trade Mark Opposition Process so that you can defend your trade mark rights.
• Opposition to a registration is only possible after a trademark has passed examination and been accepted by IP Australia.
• There are four types of oppositions either an owner of a trade mark or another person can file.
• To initiate an opposition, a Notice of Intention to Oppose is filed within two months from the time the trade mark was advertised.

Our Trademark Lawyers in Sydney are Experts when it comes to Registering Trademark or Trademark Opposition Process in Sydney

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.