A guide to trade mark oppositions
1. General Guide to Trade mark Oppositions
You might be on the receiving end — or be the one lobbing it, but a trade mark opposition can throw a real spanner in the works.
Below is our general guide to trade mark oppositions here in Australia.
TLDR: Trade mark oppositions can be fairly involved and potentially costly matters.
2. Why Oppose, or be opposed?
Purpose of an opposition
There’s a few reasons why a trade mark application might be opposed. Ultimately, it’s to try and prevent someone from obtaining registered trade mark rights.
Acceptance of a trade mark application by the Trade Mark Office indicates the application has ticked all the boxes from the Office’s perspective. But a third party might still take issue with the application and oppose it.
An opposition can sometimes be a strategic move, where a party might use it as leverage in the negotiation of a commercial dispute. The opposition might be withdrawn once the parties resolve their commercial differences.
When is an opposition not a good idea? When there’s no genuine legal or commercial basis. Opposing a trade mark application on principle or emotion alone can be a fairly expensive, and unnecessary way, to make point.
3. Time Limit for an opposition
When to oppose (or be opposed)?
There’s only a small window of opportunity to launch an opposition.
Specifically, once a trade mark application has been accepted, and the acceptance has been advertised.
The application is then open to possible opposition for 2 months from the date of advertisement.
If no opposition is lodged against the application, the trade mark will proceed through to registration.
4. Notice of intention to oppose
Launching an opposition
To launch an opposition, an Opponent needs to submit a Notice of Intention to Oppose (NIOPP) against the trade mark application of interest.
An NIOPP is intended to flag the Trade Mark Office and the trade mark Applicant, that someone takes issue with the application.
Cost to prepare and submit a NIOPP: AU$500 + GST.
5. Statement of GRounds and Particulars
Making a statement
Next, the Opponent needs to submit a Statement of Grounds and Particulars (SGP).
The SGP needs to be filed within 1 month of the NIOPP being filed.
The SGP outlines the grounds on which the opposition will be based, along with some initial details to outline the relevance of the grounds to the proposed opposition.
If an SGP is not submitted, the opposition will not proceed against the application.
Cost to prepare and submit a SGP: AU$1100 + GST.
6. Grounds of opposition
The Grounds
Grounds of potential opposition include:
- The trade mark is too similar in to an earlier trade mark for the same or similar goods or services, filed or registered by the Opponent (Section 44)
- The Applicant is not the owner of the trade mark because the Opponent has prior use of an identical or near identical trade mark for the same sort of products or services, in Australia (Section 58/Section 58A)
- The trade mark not capable of distinguishing because it descriptive, commonly used or needed to be used by other people in the course of trade (Section 41)
- The Opponent has a known reputation in a similar mark (Section 60)
- Use of the trade mark would contravene other laws such as Australian consumer law, copyright law etc (Section 42a)
- The trade mark contains scandalous materials e.g. rude or racial elements (Section 42b)
- Use of the trade mark could cause confusion (Section 43)
- There’s no genuine intention to use the trade mark (Section 59)
- The trade mark application was filed in bad faith (Section 62A)
- The application is defective because of changes or information submitted (Section 62)
- The trade mark contains false information regarding geographic origins of the products/services (Section 61)
- The trade mark contains a sign that is prohibited from use e.g. government arms, seals, flags, symbols (Section 39)
A trade mark opposition can be based on one or a combination of different grounds.
7. Notice of Intention to Defend
Defending against an opposition
Once the SGP is filed, the trade mark Applicant needs file a Notice of Intention to Defend (NID) if they wish to defend their trade mark application against the opposition.
The NID needs to be filed within 1 month of the SGP being filed.
Cost to prepare and submit an NID: AU$300 + GST.
8. Evidence in support
Opponent's Evidence
Once the NID is filed, the Opponent will have 3 months to submit Evidence in Support (EIS).
This evidence will include information and materials to support their grounds of opposition outlined in the SGP.
The costs at this stage will be dependent on the volume and quality of evidence.
To prepare and submit (or review any EIS), we advise clients to budget for AU$1500-5000 + GST.
9. Evidence in Answer
Applicant's Evidence
Once EIS is filed, the Applicant will have 3 months to submit Evidence in Answer (EIA).
The EIA is intended to address any materials and information to counter argue the Opponent’s EIS.
The costs at this stage will be dependent on the volume and quality of evidence.
To prepare and submit (or review any EIA), we advise clients to budget for AU$1500-5000 + GST.
10. Evidence in Reply
Further Evidence
Once the EIA is filed, the Opponent will have 2 months to submit any further and final Evidence in Reply (EIR).
The Opponent cannot submit any new materials or evidence, that may not have been included in their initial EIS. The EIR is strictly an opportunity to respond to any evidence submitted in the Applicant's EIA.
The costs at this stage will be dependent on the volume and quality of evidence.
To prepare and submit (or review any EIR), we advise clients to budget for AU$1500-5000 + GST.
11. Hearing
The Hearing
Once the evidence stages are completed, the opposition proceeds to a Hearing.
The Hearing is an opportunity for both sides to present all the evidence and final arguments.
The costs of the Hearing will be dependent on whether:
- The matter is determined on written submissions alone;
- The matter is attended in person (via video); and
- Whether we engage Counsel representation for the Hearing.
Generally, we will engage Counsel if the other side has engaged Counsel. This is to ensure we put our best foot forward in any final arguments.
Cost to request a Hearing: AU$950 + GST.
To prepare and attend the Hearing, we advise clients to budget for AU$5-10k – inclusive of the costs to engage Counsel.
12. Outcome of opposition
Winners and Losers
The chances of success of any opposition depends on the circumstances and strengths and weaknesses of each case.
It’s important to note the unsuccessful party in an opposition, can have claim costs awarded against them. Alternatively, if you’re successful, you can claim those costs against the other party.
Typically, the costs awarded range from AU$3-5k.
These costs are additional to any costs incurred during the opposition proceedings.
Whether you’re a trade mark Applicant on the receiving end of a trade mark opposition, or you’re a potential Opponent looking to launch an opposition — please contact us and we can help guide you further about any concerns, strategies and next steps.