What is a trade mark opposition?
When a trade mark is accepted for registration by IP Australia, it is possible for any person to oppose registration. It isn’t possible to oppose a trade mark before it has passed examination and been accepted.
The opposition is an administrative process, meaning it is managed by IP Australia (the Federal Government agency that administers the Trade Marks Act).
Why would I want to oppose a trade mark?
Generally, because you don’t want a person to obtain the rights bestowed by a registered trade mark.
This includes the rights to use the trade mark, and the right to prevent others using identical or confusingly similar marks, for the same or similar goods or services.
Sometimes trade mark oppositions are filed for tactical reasons, e.g. as leverage in a commercial dispute. Often these oppositions are withdrawn once the parties reach a compromise.
Some people wish to oppose a trade mark on principle alone, notwithstanding they have no commercial interest. I consider this to be a waste of time and money.
How does someone know when a trade mark is ready to be opposed?
Except in limited circumstances, IP Australia generally does not notify people who may wish to oppose trade marks.
Trade mark acceptances are published weekly in the online Trade Marks Journal at www.ipaustralia.gov.au.
The status of accepted trade marks is also updated on the Australian Trade Marks Office database, which can also be accessed at www.ipaustralia.gov.au.
Obviously, very few people regularly check which trade marks are being accepted for registration. Most oppositions result from professional watching services, or from pure chance that a person becomes aware of an accepted trade mark before or during the opposition period.
How long does a person have to oppose registration, and how do they do it?
Once the trade mark is advertised as accepted, a person has two months to file a Notice of Intention to Oppose. This is a very brief document which effectively says “I want to oppose trade mark no. <X>”.
Once a person files a Notice of Intention to Oppose, they will then be considered the ‘opponent’.
After the Notice of Intention to Oppose is filed, the opponent has one month to file a Statement of Grounds and Particulars. This sets out in brief the legal basis and facts on which the opposition is based.
What are the reasons for opposing a trade mark?
A trade mark may only be opposed on specific grounds listed in the Trade Marks Act.
There are numerous grounds of opposition, including:
• The opposed mark is too similar in to an earlier filed pending or registered trade mark that covers the same or similar goods or services.
• The opposed mark is too similar to a trade mark (whether registered or unregistered) that has a reputation in Australia, and confusion is likely to occur.
• The applicant for the opposed mark is not the owner of the trade mark under common law, usually because someone else has already used an identical or near identical trade mark for the same sort of goods or services, in Australia.
• The opposed mark is not distinctive and will not become distinctive. This usually occurs where the trade mark is something that other traders have a legitimate need to use, e.g. descriptive or laudatory terms, simple colour trade marks, common shapes etc.
• The opposed trade mark application was filed in bad faith (e.g. a distributor trying to register the trade mark of a manufacturer).
• The applicant did not have a genuine intention to use the opposed mark at the time they filed the application.
• The use of the opposed mark would be contrary to law. For example, if an opposed mark is a logo that would infringe the copyright owned by someone else, or if registration of the trade mark would breach some contractual obligation.
These are not the only grounds of opposition, however, they are the most commonly relied on. It is normal for multiple grounds of opposition to be pursued, as some are related.
How can an opposition be defended?
Once the applicant for the opposed mark has been provided with copies of the Statement of Grounds and Particulars, they have one month to file a Notice of Intention to Defend.
This is a brief document which states only that the applicant intends to defend the opposition.
What happens if an opposition is not defended?
If a Notice of Intention to Defend is not filed, the trade mark application will lapse, and the opponent will win by default.
However, there is nothing to prevent the applicant from simply filing a new application. As such, successful opponents may wish to watch the trade marks database to check whether a new application for the contentious mark is filed.