Trade mark oppositions

If someone thinks a trade mark shouldn’t be registered, they can object to it via a trade mark opposition

Below, we look at how a trade mark opposition plays out using a hypothetical example where:

  • Alex has applied to register a trade mark. As such, Alex is the trade mark Applicant; and

  • Oliver is opposed to Alex’s trade mark. Oliver is thus the trade mark Opponent. 

We’ll see what’s involved in opposing a trade mark application, and what it takes to defend your trade mark application if it is opposed.

Feel free to follow along with this trade mark opposition flowchart.

Step 1 – Trade mark application is accepted

Alex produces a popular range of wines under the brand Aphex.

To protect her brand against copying, she filed an Australian trade mark application covering a range of wine-related goods.

The Australian Trade Marks Office (ATMO) examined the application and considered the trade mark registrable. 

The ATMO then advertised Alex’s application in the Australian Official Journal of Trade Marks as being accepted for registration.

Key points

  • Trade mark applications are advertised as accepted for two months.

  • Third parties have these two months to oppose an accepted trade mark application.

  • The ATMO may notify third parties that a trade mark relevant to their own has been accepted for registration.

  • The majority of accepted trade mark applications are not opposed and proceed smoothly to registration.

  • See where oppositions fit in the Australian trade mark application process.

Stage 2 – Opponent files a Notice of Intention to Oppose

Oliver runs a distillery and sells a range of Ophex branded gin.  

Ophex is registered as an Australian trade mark under a broad range of alcoholic beverages (Oliver plans to sell drinks other than gin under the Ophex brand).

While Aphex wines are not a direct competitor right now, Oliver is concerned that consumers might confuse the two brands, especially if he branches out into wine.

Oliver decides to oppose Alex’s trade mark to block it from being registered.

Key points

  • To start the trade mark opposition process, Oliver must file a Notice of Intention to Oppose.

  • The Notice of Intention to Oppose must be filed within the two months that Alex’s application is advertised as accepted.

  • filing fee of $250 is payable to the ATMO.

  • A copy of the Notice of Intention to Oppose is sent to Alex.

Stage 3 – Opponent files a Statement of Grounds and Particulars

Next, Oliver must file a Statement of Grounds and Particulars (SGP).

In the SGP, Oliver lists the grounds on which he believes Alex’s OPHEX trade mark should not be registered. 

There are a limited number of grounds to choose from, including:

  • APHEX is substantially identical or deceptively similar to OPHEX.

  • APHEX is not capable of distinguishing Alex’s wines from the goods and/or services of other traders.

  • APHEX is likely to deceive or cause confusion.

  • Alex’s trade mark application was filed in bad faith.

 This is a crucial document to get right because it can be difficult, if not impossible, to add grounds later on.

Key points

  • The SGP must be filed within one month after filing the Notice of Intention to Oppose.

  • Oliver must provide information supporting each of the grounds he has nominated.

  • If the information provided is inadequate, Oliver will have a chance to provide more information.

  • If the information relating to a certain ground remains inadequate, that ground and information is deleted from the SGP.

  • If none of the grounds are adequately supported, Oliver’s trade mark opposition would be dismissed. 

Stage 4 – Applicant files a Notice of Intention to Defend

If Alex wishes to defend her trade mark application, she must file a Notice of Intention to Defend.

 

 

Key points

  • Alex must file the Notice of Intention to Defend within one month of receiving Oliver’s Statement of Grounds and Particulars. 

  • If she does not file a Notice of Intention to Defend, her trade mark application will lapse and the opposition is deemed successful.

Stage 5 – Opponent files Evidence in Support

Next comes three evidentiary stages in which Alex and Oliver can file evidence to support their cases. 

First, Oliver can file Evidence in Support. The evidence should support the grounds in his SGP and build a case for why Alex’s APHEX trade mark should not be registered. 

The evidence can include material such as sales figures, invoices, survey results, photographs, and declarations from expert witnesses. Any evidence filed must be in the form of statutory declarations.

Key points

  • All evidence is filed via Objective Connect, an online data management tool.

  • Oliver must file his Evidence in Support within three months of receiving Alex’s Notice of Intention to Defend.

  • The evidence should be comprehensive because there are limited opportunities to file new evidence later on.

Stage 6 – Applicant files Evidence in Answer

Next, Alex can file Evidence in Answer in response to Oliver’s Evidence in Support and/or the trade mark opposition in general.

If Oliver did not file Evidence in Support, Alex can respond to Oliver’s Statement of Grounds and Particulars.

Again, all evidence must be in the form of statutory declarations and filed via Objective Connect. 

Key points

  • Alex must file his Evidence in Answer within three months of receiving Oliver’s Evidence in Support (or within three months of being notified that Evidence in Support was not filed).

  • It is important to address each of Oliver’s points as it can be difficult to do so later on.

Stage 7 – Opponent files Evidence in Reply

In this third and final stage of evidence, Oliver is given the opportunity to file Evidence in Reply

 

Key points

  • Evidence in Reply may only respond to issues raised in Alex’s Evidence in Answer.

  • Oliver must file his Evidence in Reply within two months of receiving Alex’s Evidence in Answer. 

  • Any new evidence can be struck out. This is why it is important to submit all the relevant evidence with the Evidence in Support submission.

Stage 8 – Outcome of the opposition is decided

After the three evidence stages, Alex and/or Oliver can request a hearing on the trade mark opposition.

Hearings are held in Canberra, and can be in attended in person, via telephone or video conference.

Alex and Oliver can choose to be represented by trade marks attorneys, intellectual property lawyers, other representatives, or they can represent themselves.

Both parties will have a chance to file written submissions to assist the Hearing Officer with following verbal submissions on the day of the hearing.

If a hearing is not requested, a Hearing Officer will decide the outcome of the opposition based on the evidence filed. 

Key points

  • If a hearing is desired, it must be requested within one month after Evidence in Reply has been filed.

  • The Hearing Officer will listen to both parties and issue a decision based on the submissions and evidence.

  • The Hearing Officer’s decision is generally issued within three months after the hearing.

  • A hearing fee of $600 is payable.

  • The opposition decision is not final and can be appealed to the Federal Court. 

The above is a simplified look at the trade mark opposition process.

Filing evidence at strategic times, pre-hearing negotiations and settlements, and applying for extensions of time and cooling-off periods are other tools which parties can use to help (or hinder) the trade mark opposition process.

If a trade mark opposition is decided against you, you can appeal the decision to the Federal Court of Australia. Court costs are significant, so its best to run a watertight opposition to reduce the likelihood of needing to appeal to the Court in the first place.

As indicated by IP Australia:

“The opposition and hearings process can be lengthy, complex and costly. If you are considering filing or defending an opposition, it may be in your interests to seek the assistance of an IP Professional.”