Trade Mark Opposition

A trade mark opposition is the of challenging of an trade mark application. that has been accepted by the trade mark office and published for opposition purposes. Any third person can file an opposition to trade mark application within two months of the date of its publication. An opposition to registration of a trade mark must be filed based on one or more of the grounds of opposition as provided by virtue of sections 57 to 62A of the Trade Marks Act 1995.

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 will be forwarded the Notice of Intention to Oppose and Statement of Grounds and Particulars and given one month from the date of notification to file a Notice of Intention to Defend. If a Notice of Intention to Defend is not filed, the application will lapse and the opposition will be discontinued.

Evidence Stage

When the Applicant files a Notice of Intention to Defend, the opposition enters an evidence stage where both parties can submit their evidence and rebut the evidence filed by the other party.

The evidence stage is broken down into three sub-stages:

1. Evidence in Support – filed by the Opponent
2. Evidence in Answer – filed by the Applicant
3. Evidence in Reply – filed by the Opponent

Evidence needs to be filed within prescribed time frames.

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 one month of the Evidence stage being finalised. Each party will have the opportunity of representing self representing or availing themselves of the services of a trade mark attorney, lawyer or barrister to 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 usually within three 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.

Decision Stage

The Hearing Officer will issue a written decision after considering the evidence and submissions. Costs can may be awarded to the party in whose favour the matter is decided.

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