Protecting your mark – opposing a trade mark

Registering a trade mark affords the owner of the trade mark the exclusive right to use the registered trade mark and to authorise others to use the trade mark for the goods and services over which it is registered. Although registering a trade mark is a sound first step in protecting your brand, brand protection does end there.

Once you have registered your trade mark it is important to regularly review and monitor other new trade marks to ensure that your trade mark is not infringed in any way.

Trade mark owners should protect their property by regularly reviewing pending trade mark applications to ensure they do not infringe on any prior registered trade marks or other marks which, although unregistered, have acquired a reputation in relation to particular goods or services for that owner.

Opposing a trade mark registration

Any person can oppose another’s trade mark application on the same grounds on which IP Australia can refuse to register a trade mark. The only ground on which an individual cannot oppose a trade mark is on the ground that the trade mark cannot be represented graphically; only IP Australia may reject a trade mark registration on this ground.

A trade mark application may be opposed where the proposed trade mark:

(a) is not a sign;

(b) does not distinguish the relevant goods or services;

(c) consists of or contains prohibited signs;

(d) is scandalous;

(e) is contrary to law;

(f) is likely to deceive or cause confusion if used;

(g) is substantially identical with or deceptively similar to a registered trade mark for similar or closely related goods or services;

(h) the applicant is not the owner of the mark;

(i) the opponent can show earlier use of a similar trade mark;

(j) is substantially identical with or deceptively similar to another unregistered mark which has acquired a reputation in Australia over certain goods or services;

(k) contains or consists of a false geographical indication;

(l) the application was based on evidence or representations that were false; or

(m) the application was made in bad faith.

Process for opposition

To oppose a trade mark a party must file a Notice of Intention to Oppose with IP Australia and pay a $250 fee thereby halting the proposed trade mark’s registration. A Notice of Intention to Oppose can be filed during the two month period after the proposed trade mark is advertised in the Australian Official Journal of Trade Marks. The opponent then has one month to provide a statement of grounds and particulars establishing the basis and reasons for the opposition.

The applicant is afforded one month to file a Notice of Intention to Defend if it wishes to defend its trade mark application.

An opponent bears the onus of proof for establishing grounds to oppose the trade mark and has 3 months to file its evidence once being informed that the applicant intends to defend the trade mark application. An opposition is a formal objection and requires sound evidence to support the opposition.

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