Brand-to-brand combat: A guide to trade mark oppositionsBrand Camp
June 30, 2021
Welcome to Fight Club brand owners — aka trade mark oppositions.
- First rule: You should talk about it.
- Second rule: You should talk about it with a professional.
- Third rule: You can oppose or be opposed.
- Fourth rule: Timing is everything.
- Fifth rule: Mano-a-mano or pile on.
- Sixth rule: Shirt, shoes and a strategy are recommended.
- Seventh rule: Go all in or tap out.
- And the eighth and (not so) final rule: If you’re a first timer to trade mark oppositions – you should probably keep reading.
Whether you’re on the receiving end or the one lobbing it, a trade mark opposition can throw a real spanner in the works for a brand owner.
Starting with the first and second rules above, let’s talk about trade mark oppositions — what they’re about, why they might happen and how they can unfold.
What is a trade mark opposition?
The mention of a trade mark opposition can trigger the dry heaves for any brand owner. The name itself isn’t exactly warm, fuzzy and welcoming. But ultimately a trade mark opposition is an opportunity for brand owners to sort out their legal and commercial differences over a brand asset.
Trade mark oppositions are part and parcel of the trade mark registration process. For example, an opposition can be filed during the application process, or down the track after a mark is registered.
In the case of trade mark application, not every application will encounter an opposition, but every application is open to possible opposition. On the other hand, an opposition might be needed to keep a registered trade mark from being removed.
You can oppose or be opposed
There are a few reasons why a trade mark might be opposed. The TLDR reason is this: to prevent someone from obtaining, or maintaining, registered trade mark rights.
The 13 words every trade mark Applicant loves to read: “Your trade mark application has passed the examination stage and has been accepted.” But acceptance of a trade mark application simply indicates an Examiner thinks your application has ticked all the boxes for registration. In other words, it’s an Examiner’s opinion. And you know what they say about opinions — everyone has one. A third-party might have an opinion about your application too. They might have a particular issue with your application and oppose it.
And if you own a registered trade mark, you should definitely flaunt it and use it. If you don’t use your mark, it could be at risk of removal by another party. If someone challenges your registration for non-use, you’ll need to launch an opposition to defend your mark against the removal action and prevent the loss of any registered rights.
Oppositions aren’t all about going to the mattresses. They can sometimes be a strategic move to enable and leverage negotiations such as a co-existence agreement. The opposition might be withdrawn after the parties resolve their commercial differences.
When is an opposition not a good idea? When there’s no genuine legal or commercial basis for it. Opposing a trade mark on principle or emotion alone can be an expensive way to make an unnecessary point. Anyone spoiling for a trade mark opposition for the sake of it should probably check their pulse and purse.
Timing is everything
For any budding Opponents out there, you'll want to save the date because there are specific time frames to launch an opposition. Miss these windows and the options to challenge a trade mark become a little bit more limited, and possibly a lot more expensive.
To oppose a trade mark application, you’ll have 2 months from the date the acceptance of the application is advertised. And no, generally you won’t receive a save the date card from the Trade Mark Office about the acceptance of an application. You’ll need to keep an eye on the application, or engage a professional to monitor it, so you don’t miss the window of opposition.
To oppose the removal of your registered mark, you’ll have 2 months from the date a non-use application is advertised. In this case, the Office will notify you if someone has filed a non-use action against your mark. To avoid any return to sender issues with any important notices, make sure you keep your contact details up to date with the Office.
Mano-a-mano or pile on
Generally, a trade mark opposition is a stoush between two brand owners, but it’s not always the case. Sometimes, several different parties might take issue with a trade mark application and each will launch their own opposition against it.
Alternatively, different parties might be keen to see a registered mark removed. In this case, the registered trade mark owner will need to lodge an opposition against each party to defend their mark from removal.
Shirts, shoes and a strategy are recommended
Before you launch into a bare-knuckled bout over a brand, best to tool up with a sound strategy. It's important to understand whether you have any actual grounds to initiate an opposition. A trade mark can only be opposed on specific grounds, for example:
- The trade mark is identical or similar to the Opponent’s existing trade mark(s);
- The Opponent has a reputation in a similar trade mark;
- The Applicant isn't the true owner of the trade mark;
- The trade mark isn’t distinctive i.e. it's descriptive or commonly used by others;
- The trade mark application was filed in bad faith;
- The trade mark has been used, or there was an intention to use a trade mark (if opposing a removal action).
The above are just some of the common grounds of opposition, but they're not the only grounds available. An opposition might be based on one, or a combination of different grounds.
The strength and weakness of any opposition will depend on how well you can support the grounds of opposition with genuine facts, figures and material evidence.
Go all in or tap out
Opposition proceedings can be a fairly involved process, so don’t expect an immediate KO. There are several stages to an opposition, including:
- A Notice of Intention to Oppose — this is simply a notice to flag that a party takes issue with the trade mark application (or removal application);
- A Statement of Grounds and Particulars — this statement specifies the Opponent’s grounds of opposition, along with some brief details outlining the relevance of the grounds to the opposition;
- A Notice of Intention to Defend — the trade mark Applicant (or removal Applicant) needs to file this notice if they're keen to defend against the opposition;
- Evidence — once the initial stages above are completed, it’s basically game on with the opposition proceedings. The parties will each have an opportunity to present evidence to support their respective cases. There are three rounds of evidence including Evidence-in-Support, Evidence-in-Answer and Evidence-in-Reply;
- A Hearing — after all the evidence has been filed, the Trade Mark Office will consider final arguments from both sides and then issue a decision on the matter.
The costs associated with an opposition depends on the complexity of the issues involved and how far the opposition proceeds. A solid game plan will help determine if there are opportunities to settle the matter sooner or to go all in with the opposition.
Sidenote: Oppositions occur at the Trade Mark Office, with the sole purpose of deciding whether to refuse or remove registration of a trade mark. Stopping someone from using a trade mark however, you'll probably need to consider a Court action to do this.
If you’re on the receiving end of an opposition, or looking to launch one, remember the first and second rules above. It’s definitely worth a chat, especially with an experienced trade mark attorney to help you understand and pick your battles.
Image credit: Yaroslav Danylchenko