Trade mark oppositions

While many applications proceed smoothly to registration and remain on the Trade Marks Register without any issues, situations occasionally arise where third parties may take steps to challenge a trade mark. These challenges are known as oppositions.

When it comes to Australian trade marks, oppositions will generally fall into one of two categories – opposition to registration of a trade mark or a removal of a trade mark from the register for non-use.

It is important for businesses to understand the process, so they can defend their trade mark applications or registrations, and to act strategically against conflicting marks where necessary. Oppositions help to keep the trade mark system both fair and effective by ensuring that marks are only registered if they meet the correct legal requirements and that the Trade Marks Register is up to date, with registrations being kept alive for marks that are actually being used in the course of trade (and being removed if not).

Opposition to registration – what does it mean and what is the process?

Once you have filed your trade mark application with IP Australia and it has passed through the examination stage, your trade mark application will be accepted and advertised in the Official Trade Marks Journal. Once published, a 2-month opposition period will commence.

It is during this opposition period that third parties can formally oppose the registration of your mark, often because they consider your pending application to be too similar to their own existing mark. The opposition process is managed by IP Australia and is a formal proceeding with strict steps and deadlines.

Whilst many opposition matters are resolved through negotiation between the parties, if no agreement can be reached, then the formal process for oppositions is:

• First, the opposing party must submit their formal Notice of Intention to Oppose with IP Australia;

• Within a month from the filing date, the opposing party must also file their Statement of Grounds and Particulars which outlines the legal grounds upon which they seek to oppose registration of your mark – once both of these documents have been filed, your trade mark will be officially under opposition;

(If at this stage the Opponent fails to file their Statement of Grounds and Particulars, the opposition will be dismissed by IP Australia and, pending any other oppositions raised, your mark will proceed to registration)

• Upon receipt of notification from IP Australia of the Statement of Grounds and Particulars being filed, you will have 2 months to file your Notice of Intention to Defend;

• The Opponent then has 3 months to prepare and file their Evidence in Support;

• You will then have 3 months to prepare and file your Evidence in Answer; and

• The Opponent will have a further 2 months to prepare and file their Evidence in Reply.

Following completion of the above stages, both parties then have an option to request a hearing (by way of either written submissions or an oral hearing) or to request a decision from IP Australia without a hearing. IP Australia will then consider all submissions and evidence provided, then issue a decision.

If the opposition against your mark is successful, your trade mark will be refused (either in full, or partially so as to limit the good and services, dependent upon the Hearing Officer’s decision in the proceedings).

If the opposition against your mark is unsuccessful, your mark will then proceed to registration.

Removal for non-use – what does it mean and what is the process?

If you have a registered trade mark, you need to ensure that you are using it. Marks that are not in use for a continuous 3-year period in relation to the relevant goods and services can become vulnerable to cancellation and removal for non-use.

Non-use removal actions are generally filed by third parties who have applied to register a trade mark, with your earlier mark being cited as an impediment during examination. The key difference between non-use applications and oppositions to registration is that, in non-use actions, the onus is on the owner to prove why its mark should remain registered.

If a non-use removal action is filed against your mark, the process is again managed by IP Australia and is a formal proceeding with strict steps and deadlines:

• From the date that the non-use removal action is filed, you have 2 months to file a Notice of Intention to Oppose;

If you fail to file a Notice of Intention to Oppose by the deadline, your mark will be removed from the Register.

• You will then have 1 month following the Notice of Intention to Oppose to file your Statement of Grounds and Particulars (which addresses the claims and provides brief facts and circumstances regarding your use of the mark during the relevant 3 year period, your intention to use the mark or any circumstantial obstacles that prevented you from using the mark);

• The non-use applicant will then have 1 month to file their Notice of Intention to Defend

If the Notice of Intention to Defend is not filed, the non-use application will be dismissed and the mark will remain registered.

• You will then have 3 months to prepare and file your Evidence in Support

• The non-use applicant will then have 3 months to prepare and file their Evidence in Answer;

• You will have a further 2 months to prepare and file your Evidence in Reply.

Following completion of the above stages, both parties then have an option to request a hearing (by way of either written submissions or an oral hearing) or to request a decision from IP Australia without a hearing. IP Australia will then consider all submissions and evidence provided, then issue a decision.

If the non-use application against your mark is successful, your trade mark will be removed from the register entirely or the goods and services may be limited to those for which you were able to demonstrate use.

If the non-use application against your mark is unsuccessful, your mark will remain on the register.

Why is defending against oppositions important?

Because your brand is one of your business’ most valuable assets – it is what customers recognise and trust, often as a result of years of hard work and investment.

An opposition to registration means your ability to trade under your brand may be limited with any plans for expansion under the brand shelved. And losing your mark to non-use means you lose the exclusive rights to your brand.

Getting the right strategic advice and taking action early against oppositions can make a significant difference to the outcome. If you are dealing with a trade mark opposition or non-use challenge, our IP team at Coulter Legal would be happy to discuss your situation and assist you to navigate proceedings by providing practical advice from the outset regarding:

• Thorough case assessment to understand the strength of the opposition and your position;
• Presenting your case clearly and persuasively through evidence;
• Exploring practical commercial resolutions between the parties to avoid incurring additional unnecessary costs; and
• Managing the process with you from the first notice through to resolutions or decisions (should the matter progress to a hearing with IP Australia).