Comprehensive Guide to Trademark Oppositions

Your trademark acts as a powerful representation of your brand in the business world, bringing with it a high level of protection and responsibility. As a trademark holder you should familiarise yourself with the concept of trademark oppositions.  This type of opposition is a formal process in which one trader lodges an opposition against another trader’s trademark being registered with IP Australia.

You may find yourself in a situation where you need to either lodge an opposition or end up on the receiving end of one.  In both situations it’s important to comprehend the details involved in this concept.  It is worth noting that trademark oppositions can be both time-consuming and expensive exercises and be aware that a successful opposition isn’t the same as preventing trademark infringement. Although allegations of trademark infringement may occur during an opposition proceeding, they’re considered two separate actions. Formal infringement action takes place through the court system whereas IP Australia have the jurisdiction to decide on an opposition proceeding.

While you are allowed to represent yourself in an opposition proceeding, it is not advisable.

The complex and specialised nature of most oppositions, regardless of whether you are lodging or find yourself on the receiving end of a complaint, comes with a strong recommendation to seek out a professional trademark attorney or trademark expert.  Not doing so may lead to making a mistake resulting in negative consequences, which are sometimes impossible and/or difficult and costly to fix.

Reasons for Opposing a Trademark

The Trade Marks Act 1995 sets out the relevant grounds that someone may rely on to oppose a trademark. There are many grounds on which an opposition can be based. Most commonly they stem from things like:

  • The belief the trademark is the same or very similar to an earlier trademark, which they feel they have a superior claim over.
  • The belief that the trademark applicant is not the actual owner of the trademark.
  • The believe that use or registration of the trademark may cause confusion in the marketplace or interfere with the reputation of their trademark.
  • They believe the application was filed in bad faith, which can happen in situations (for example) where someone in Australia has identified that an overseas brand hasn’t been protected here. The belief is therefore the applicant put in an application with full knowledge that they shouldn’t be filing for that particular trademark, and knowing that they’re not the correct and rightful owner of it.
  • Belief that the trademark may be contrary to law – for example if the trademark will break someone’s contractual obligations or that use of the trademark would mislead consumers in any way.

Most commonly, oppositions occur when one person believes the filed trademark is somehow too similar to their own brand or rights. Most oppositions will have a direct relationship to the classes of goods or services of the application on of the relevant parties activities. However, there is no set requirement that the classes of the parties involved be the same or related. For example, a well known brand such as Coca-Cola Australia would wish to oppose someone registering a trademark with ‘coca cola’ in it, irrespective of the goods/services claimed.

This can occur even if it’s not in the same class of products or services because it will very likely cause confusion in the marketplace in view of Coca-Cola’s reputation.  There are other factors leading to someone lodging the initial Notice of Intention to Oppose a trademark including, if an individual believes the mark is too generic or descriptive.  They are able to file on the basis of the person not being able to receive exclusive rights on a generic term which could impose on the rights of other trader’s and interfere with the running of their businesses.

When  Can You File a Trademark Opposition?

Only once a trademark has been accepted for registration by IP Australia, are you able to lodge an opposition.  There is a two-month window of opportunity for the public to lodge an opposition to the registration of a trademark (or seek an extension of this time-frame) after IP Australia advertises that the application has been approved.

You won’t always be directly notified by IP Australia if a similar trademark to yours is approved so you may file opposition in time, but typically you will be informed in a situation where the later application has successfully overcome your trademark during the application process in order to gain its acceptance. To find out about similar trademarks being advertised you will usually need to monitor the trademark database and journals. Contact our office if you would like to receive a quote for a monitoring service.

What Trademarks Can be Opposed?

During the two-month period after a trademark has been advertised as accepted, any mark may be opposed and although there are some circumstances in which it’s possible to obtain an extension, you should not rely on this option.

The most common oppositions we see filed are those preventing the registration of a new trademark application. However, there are other things that can be opposed through IP Australia such as:

  • An application for an amendment to a trade mark application
  • An application to remove a trade mark from the register because it has not been used
  • An application for an extension of time for a trademark of more than 3 months.

How do you File a Trademark Opposition?

Due to the long and complicated nature of an oppositional proceeding, it’s highly recommended you use an industry professional to attend to the proceeding on your behalf, which ensures you that the entire process is handled correctly and provides you the best chance of succeeding.

The first step in the process of filing a trademark opposition is to file a Notice of Intention to Oppose.  This must be filed within two months of the acceptance of the trademark being advertised in the Australian Official Journal of Trademarks.

A brief summary of the next steps is as follows:

  • Filing a Statement of Grounds and Particulars. This is a more thorough document, and it’s where you’ll need to provide more information about the opposition you wish to lodge.  You must provide details about the sections of the Act that you intend to rely on in your opposition, as well as provide an explanation as to why you feel those grounds are relevant in your opposition. This document will also give you the chance to apply for an award of costs at this time, in the event you are the successful party.  The Statement of Grounds and Particulars must be filed within one month after you have lodged the Notice of Intention to Oppose unless an extension of time is obtained (we again encourage clients not to rely on an extension, as it may be rejected/not granted). If for whatever reason you happen miss this deadline and cannot achieve a late extension, your Notice of Intention to Oppose will become void and the applied for trademark will continue to registration.
  • The trademark applicant is then given an opportunity to defend the opposition, and they will need to file notice of their intention to defend within one month of being provided a copy of the Statement of Grounds and Particulars. Failure on their behalf to file a notice will result in their trademark lapsing.
  • In the situation where the applicant chooses to defend the opposition, each side will be given the chance to file evidence to support their position. The evidence phases adhere to a strict timetable. Unless the matter is resolved or dismissed sooner, following the evidence stages, a decision needs to be issued. This can be a written decision based on the evidence and submissions filed, or either party can request an oral hearing before a decision is issued.
  • Usually, an award of costs is issued against the unsuccessful party in an opposition proceeding. Such award usually occurs after a decision has been made, so if a party withdraws earlier in the process there may not be any costs awarded. Further, an unrepresented person may not have the ability to obtain the award of costs in the same way or to the same amount as a represented person, unless they can demonstrate they did incur such costs for obtaining assistance/advice during the proceeding. Costs are awarded in accordance with a scale set by the Trade Mark Regulations 1995.
  • As long as both sides consent, a request for a cooling off period can be submitted by the parties once the Statement of Grounds and Particulars has been filed. This is used generally if the parties are involved in negotiations with the view of resolving any dispute before involving themselves in the more complicated and costly stages of the process.  The initial period of cooling off is 6 months (although this can be discontinued earlier), with a further extension of 6 months if required.

How Much Does Trademark Opposition Cost?

The total cost involved in the trademark opposition process will be determined by whether you go-it-alone or use the services of a qualified trade marks attorney or solicitor.  At Mark My Words we always recommend you seek the advice and guidance of a solicitor or trademark professional as the process is complex and protracted. Going solo can have serious consequences just by making simple technical errors.  It’s probably even more important to have representation if you know the other party has representation.

Other factors which may impact the total costs involved will be determined by:

  • If or how quickly an amicable outcome can be reached. It is obviously less expensive to sort things out before progressing through a full opposition proceeding.
  • If an agreement cannot be reached between the parties, costs may be impacted by the volume of each party’s evidence, whether written submissions are required for consideration in the ultimate decision, whether a hearing is requested and whether additional services (such as those of a barrister or investigator) are necessary.

It’s near impossible to predict a cost for an opposition proceeding before any facts are known. A fully contested case (from filing through to a decision) could range from $5000 to $15,000 (sometimes lower/sometimes higher). The higher end of this range would be more likely when an oral hearing has occurred during the process, and submissions and representations have included a barrister’s attendance. There are ways to keep these costs at the lower end, but this can mean taking short cuts and skipping certain parts of the process.

Each case is unique and in some situations there will be a stronger recommendation for properly drafted legal submissions or attendance and representation at a hearing, whereas for others this may not be necessary. Usually this is decided by who the other party is and how much they are investing in their representation during the process. Due to the lengthy process of an opposition procedure (normally a minimum of 18 months) these sorts of fees do not need to be payable upfront but are staggered across the process.

What Should you do If Your Trademark is Opposed?

To avoid any impulsive reactions and to ensure you’re on the right track in protecting your trademark, we first advise you to get professional advice. This can help ascertain whether or not the opposition has any merit and if so, what your options are.

Once an Opponent has filed their statement, detailing the reasons for their opposition, we will be able to look at the history of the trademark and start considering an appropriate defence. Once that Statement is filed, we are in a better position to look at chances of successfully defending the opposition and securing trademark registration.

Where it looks likely that the opposition may succeed, resulting in your trademark being rejected, we can orchestrate negotiations with the opposing party on your behalf in the hopes of reaching suitable outcomes whilst avoiding lengthy opposition proceedings that do not have guaranteed outcomes.  Having a professional IP expert or solicitor act on your behalf can save you a lot of stress, time and money.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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