One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Other types of oppositions
Any party can lodge an opposition, which is a formal complaint submitted to IP Australia to counter the registration of a trade mark. However, other types of oppositions can be filed to stop other requests made to IP Australia.
Opposing an extension of time of more than three months
Owing to commercial or strategic reasons, a party may oppose an extension of time of more than 3 months requested by another party. There are provisions for this under section 224 of the Trade Marks Act 1995.
Common reasons for opposing an extension include:
- The other party has already been granted a sufficient amount of time to address the issues in their application.
- Your position may become disadvantageous if such an extension is granted.
- The other party has provided insufficient justification for the time extension.
In order to oppose a request for time extension beyond three months, the opponent must submit a notice of intention to oppose within one month of advertising the request for extension in the Australian Official Journal of Trade Marks and paying the corresponding opposition fee ($250 per trade mark).
Opposing an amendment to a trade mark application
Similarly, you may oppose a request to change a trade mark application according to section 65A of the Trade Marks Act 1995 if you consider that the amendment will affect your trade mark rights.
To oppose an amendment to a trade mark application after the advertisement of the details, you will need to file a notice of intention to oppose within one month of the request being published in the official trade mark journal and pay the corresponding fee.
Opposing removal applications for non-use
Trade mark registrations may be removed if it is no longer used by the registered owner. Non-use removal action is one of the common approaches for trade mark applicants to address conflicting prior registrations. As a trade mark owner, you may defend your registration by opposing the non-use application.
Intention to Oppose
To oppose an application for removal of a trade mark registration, the registered owner can file a Notice of Intention to Oppose, followed by a Statement of Goods and Particulars. If no opposition is filed or the owner fails to file a Statement of Grounds and Particulars (SoGP), the registration will be removed.
Intention to Defend
If an opposition is initiated, to pursue the non-use application, the removal applicant may file a Notice of Intention to Defend within 1 month from the date of receiving the SoGP filed by the owner. Failure to file a NID will result in the registration remaining on the register.
Evidence in Support
If the removal applicant files a NID, the opponent must file Evidence in Support (EIS) in support of the grounds of the opposition. If EIS is not filed, Opposition fails and registration will be removed.
Evidence in Answer
If EIS is filed by the opponent, the removal applicant may file Evidence in Answer (EIA).
Evidence in Reply
If EIA is filed by the removal applicant, the opponent may file Evidence in Reply (EIR) in response to EIA.
When the evidence stage ends, either party may request to be heard or present written submissions in order to support their case.
The Hearing Officer decides the case based on his or her consideration of the evidence and submissions filed by both parties. A decision is made in writing and sent to both parties. The winning party may be awarded costs.