Trade mark opposition

Trade mark opposition is commonly referred to an opposition to an application for registration of a trade mark which is a means of challenging an accepted trade mark application. Any interested third person can file an opposition to trade mark application within 2 months from the date of its publication on Australian Official Journal of Trade Marks. An opposition to registration of a trade mark must be filed based on one or more of the grounds of opposition as provided in sections 57 to 62A of the Trade Marks Act 1995.

Trade Mark Opposition Procedure
Trade Mark Opposition Procedure

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Notice of Intention to Oppose

A notice of intention to oppose must be filed within two months from the date of an application being accepted and published. A Statement of Grounds and Particulars (SGP) must be submitted within one month after a notice is filed.

Notice of Intention to Defend

The Applicant of the Application to be opposed will be forwarded the notice of intention to oppose and statement of grounds and particulars and allowed one month from the date of notification to file a notice of intention to defend. It is the owner’s onus to defend its trade mark application. If a notice of intention to defend is not filed, the application will lapse and the opposition will be discontinued.

Evidence Stage

When the owner files a notice of intention to defend, the opposition enters to evidence stage where both parties can submit their evidence and rebut the evidence filed by the other party.

Evidence stage is broken down into three stages:

  1. Evidence in support – filed by the opponent
  2. Evidence in answer – filed by the owner
  3. Evidence in reply – filed by the opponent

Evidence needs to be filed within prescribed time frames.

Hearing and Decision Stage

When the evidence stage ends, either party can request to be heard. A hearing may be attended in person or over the phone or by making written submissions. Hearing officer will issue a written decision after considering the evidence and submissions. Costs may be awarded to the winning party.

Either party may file an appeal against the decision the Federal Court or the Circuit Court within 21 days of the decision date.

Hearings

A trade mark opposition hearing is the final step of an opposition proceeding and it will take place at the request of either party within 1 month of the Evidence stage being finalised. Each party will have the opportunity of representing themselves or avail of the services of a trade mark attorney, lawyer or barrister and provide their submissions. A Hearing may proceed with the parties participating through a phone call, video conference or with their physical attendance.

Once the Hearing Officer has considered the submissions and evidence filed in the matter, it will provide a written decision within 3 months of the Hearing date and communicate it to the parties.

It is also possible for a matter to be decided on the written record if neither party requests a Hearing.

Appeals

An Appeal may be filed on account of the Registrar’s delegate’s decision to:

  • Reject or conditionally approve a trade mark application;
  • Refuse or accept trade mark opposition proceedings;
  • Request to amend a trade mark application, trade mark particulars, and international trade mark details;
  • Revoke registration;
  • Oppose a removal application; or
  • Reject or conditionally accept an IRDA.

An appeal may be filed to the Federal Court or Circuit Courts within 21 days of the Hearing decision date.

Ex-parte hearings

Ex parte hearings can be utilised to seek relief for urgent matters concerning one party.

Ex parte hearings can take place to resolve procedural matters, such as appealing a trade mark refusal when the applicant has attempted without success to address the trade mark examiner’s reasons during trade mark prosecution or to address the proposed revocation of a trade mark.

Ex parte relief can also be utilised for short periods to provide interim interlocutory injunctions for matters that require swift resolution and are typically valid until the court provides their decision or another party involved in the matter can report and participate in a hearing.