Trade Mark Opposition
What is a Trade Mark opposition?
Following examination and acceptance of your Trade Mark application by IP Australia, your application will be submitted for advertisement in the Official Journal of Trade Marks for a period of 2 months. During that time, third parties who are aware of your application have the opportunity to file an opposition with IP Australia. Once opposed, time frames for submission of evidence by both parties will be set by IP Australia and once that is complete, the parties will be given the opportunity to be heard, either by filing written submissions or by attending a hearing, either by video link or at the Hearing Office in Canberra.
Why have I been opposed?
There are many reasons why a party may oppose a Trade Mark application. There may be an issue concerning ownership of the name between yourself and someone you know. Larger corporations also frequently monitor and oppose Trade Marks containing key terms or features to prevent dilution of their brands. Often, oppositions can be filed strategically as leverage to deal with issues which would normally be dealt with at a Federal Court level but without the expense of a court proceeding.
How long does a Trade Mark opposition take?
Typically, it takes about 1 year for the evidence stages to be completed after which the parties can request for a hearing date to be set. The parties can however agree to a cooling off period for the purposes of negotiation which freezes the time frame temporarily.
What outcome can I expect from a Trade Mark opposition?
Since opposition is an administrative process, the eventual outcome of a Trade Mark opposition will be either that your Trade Mark is registered or refused. The Hearing Officer does not have the power to order injunctive relief to prevent a party from using a Trade Mark or to order damages. The successful party may be awarded costs, however these are capped and unlikely to exceed around $6,000. Either party can appeal a Hearing Office decision to the Federal Court within a limited time frame of the decision being handed down. In the case, the appeal is heard from scratch and can include new or different evidence to what was submitted originally.
What does an opponent need to prove?
There are 11 primary grounds which an opponent can rely upon in establishing an opposition. These include the same grounds which the Examiner will have considered in assessing the application for acceptance in addition to other grounds which are specific to oppositions. Some of the more common grounds include:
a. Deceptive similarity with prior marks (section 44):
Essentially, this ground alleges that the Examiner has made an error in their assessment of registrability and that there are substantially identical or deceptively similar marks which should have been raised in examination. Those marks usually belong to the Opponent but can also belong to third parties. This objection relies primarily on legal submissions, however evidence relating to honest concurrent use or prior continuous use of the mark by the Trade Mark applicant will also be relevant.
b. Reputational grounds (section 60/ section 42(b):
This ground is similar to section 44 but relies on the Opponent’s ability to establish that it has an existing reputation in their Trade Mark rather than their registered rights. Therefore this ground relies heavily on evidence in support of the Opponent’s marketing activities and recognition of their brands.
c. Applicant not the owner of the Trade Mark (section 58):
Because Trade Mark rights are established based on first use rather than first to file, an Opponent can be the common lawyer owner of a Trade Mark even if they have not applied for or obtained a registered Trade Mark. However, to establish this ground, the Trade Mark used must be very close, if not identical, to the Trade Mark being opposed.
d. Bad faith (section 62A):
This is a broad ground dealing with circumstances where a party has acted improperly or unfairly in attempting to secure Trade Mark rights. Usually this is evoked in circumstances between former business partners or parties dealing at arms length where one party has misused information obtained from the business relationship to attempt to secure Trade Mark rights.