I am a Trade Marks Attorney. One of the most interesting aspects of my job is trade mark opposition work. These are disputes over whether or not trade marks should be registered.
However, I often see opposition decisions handed down where I seriously wonder what on earth the parties are arguing about. Quite simply, many oppositions are pointless and a waste of time and money. Good for the lawyers, but not good for the clients.
The following is my take on what people should consider before getting involved in a trade mark opposition. But first…
What is an opposition?
The Australian Trade Marks Act allows registration of a trade mark to be opposed by any person.
There are a number of grounds for opposing registration of a trade mark.
The main grounds are usually that the trade mark is too similar to an earlier trade mark (either registered or unregistered), or that the trade mark is descriptive or non-distinctive (and something that other traders generally may need to use).
The trade mark opposition process is relatively streamlined and efficient. This is because oppositions are decided by a delegate of the Registrar of Trade Marks, and not by a court.
Evidence is usually in the form of declarations (oral evidence is very rare). There is no discovery process. The strict rules of evidence do not apply, meaning that the delegate usually applies a common sense approach to the relevance and weight given to evidence submitted by each party. Hearings also usually take less than half a day.
The whole process (including evidence and hearing) if run efficiently by an experienced practitioner can often cost under $25,000. While the losing party is generally also ordered to pay costs, these are capped and would rarely exceed $5,000.
Further, only a small percentage trade mark opposition decisions are appealed (around 5%). This means that a trade mark opposition has a good chance of achieving a degree of certainty for the successful party.
For many businesses, the above factors mean that the trade mark opposition process is accessible. It is often worth 25k to have a shot at the stumps. However, there are a number of factors to consider before embarking on an opposition.
Five things to consider
1. If I win, will I achieve what I want to achieve?
It is important to remember that the Trade Marks Office can only refuse registration. It cannot prohibit use of a trade mark. Only a court can do that.
In many cases, losing an opposition may deter an applicant from using the trade mark, but this is not always the case. Often, if a person is committed to a trade mark, they will simply keep using a trade mark even if it is unregistered.
In cases where there is a conflict between trade marks of two parties, the only way to force someone to stop using the mark is to commence court action. That means big dollars and barristers who drive Maserati’s.
It is important at the outset to formulate a plan about the outcome you want. Often, the opposition process is most useful when used as leverage to reach an agreement with the other side. Agreements are excellent ways to resolve trade mark matters… they provide certainty and limit costs.
2. Am I prepared to go all of the way?
It is important to know your enemy.
If the other side is a big company, and the opposed trade mark appears to be important to them, then they will probably have a war chest.
While you might get out of the opposition with a win and a costs order in your favour, the matter can always be appealed to the Federal Court and beyond….again, barristers in Maserati’s.
Once embroiled in litigation, it may not be straightforward to get out of. You cannot simply withdraw, as this may lead to a costs order against you. There have also been recent cases where the parties have spent so much money on litigation that they have to keep going, if only to try and recover some of their costs.
Needless to say, this is a situation to avoid. If you think the other side is likely to appeal an adverse decision, then planning your strategy and considering your resources at the outset is crucial.
3. Am I fighting this on principle?
Best of luck with that.
If you are fighting a trade mark case purely on principle, you may have too much money or not enough business sense. Trade marks are purely commercial creatures. If you don’t want someone to register a trade mark, it should be because some tangible interest is threatened.
This could be a commercial interest (i.e. registration of the mark could hurt your business), or a public interest (for example, a professional association opposing a trade mark that it believes could harm the interests of its members or mislead the public).
A trade mark opposition should only be pursued as far as necessary to protect that interest. If the other side tables an offer that resolves the problem, agree to it.
4. Am I being honest with myself?
Some trade mark disputes arise out of breakups in business relationships.
It is human nature to perceive yourself as the wronged party, and to remember previous agreements in a way most favourable to you.
However, oppositions are decided on fact and law. The delegate will look at the evidence dispassionately and make a decision accordingly. If you don’t have evidence supporting your case, you will probably lose. Worse still, you may end up in a poorer position than when you started.
5. Do I really care?
Again, this comes back to having some interest worth defending. If the actions of the other party, however infuriating, are not likely to ever hurt you financially, why bother?
Now that I’ve considered all that… what should I do?
You should call me. I like trade mark oppositions… provided there is some issue worth fighting over. Opposition cases are the most interesting work I do.
If you are unsure… call me anyway. It never hurts to discuss things with a professional, and if I can help you avoiding Maserati driving barristers, so much the better (for you, not them).