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.
Opposition to Registration of a Trade Mark
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 party 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.
Grounds of opposition to registration
In Australia, an opposition is known as the formal process of objecting to the registration of another mark. Once a trade mark application is accepted and advertised in the Official Journal of Trade Marks, any party can oppose the application under one or more grounds specified in the Trade Marks Act (1995) within 2 months of the advertisement date. The grounds for opposing a trade mark application that an opponent can rely on are explained below.
Prohibited Signs (Section 39)
A trade mark application may be opposed on the ground that it contains prohibited signs. Examples of these prohibited signs are:
- Arms, seals, and flags of Australian Federal or State governments
- Arms or emblems of Australian public authorities or towns
- Foreign national symbols, or hallmarks
- Signs of intergovernmental organisations.
Capacity to Distinguish (Section 41)
Another ground for opposing a trade mark application may be opposed on the ground that the trade mark is not capable of distinguishing the applicant’s goods/services from those of other traders. Considerations for determining if this ground is established will include whether other traders are likely to desire to use the same trade mark in connection with their own goods or some trade mark nearly resembling it without improper motive.
Contains Scandalous Matter (Section 42)
A trade mark application may be opposed if the trader mark application contains scandalous matter or if its use would be contrary to law. Whether a mark contains “scandalous matter” will be determined by reference to the meaning of the trade mark and whether it contains elements that are likely to be considered as shocking or offensive, for example that the mark contains elements that may be considered as:
- Personal abuse
- Incorporate racial or ethnic abuse
- Incorporate abuse of a national flag
- Incorporate elements of religious intolerance
- Incites violence and/or terrorism.
“Use contrary to law refers” to the contravention of a specific legislative body, for example that the mark uses a geographical indication in relation to the provision of wine, meaning it could potentially contravene the Australian Grape and Wine Authority Act (2013).
Considered Confusing (Section 43)
A trade mark application may be opposed on the ground that the trade mark’s use in relation to certain goods and services is likely to cause confusion. The confusion may be with regards to:
- The character of their goods and services (composition and nature),
- The quantity or quality of the goods and services, or
- The geographical origin of the goods or services.
Conflict With an Earlier trade mark (Section 44)
A Trade Mark may be opposed on the ground that is substantially identical and/or deceptively similar to a previously registered/applied for trade mark and relates to similar or closely related goods and/or services.
Applicant not the Owner of the Mark (Section 58)
Ownership of a mark in Australia will be established through the use of the mark. Under this ground, an opponent may show that it used the mark before the date of Application of the Opposed mark and is therefore the owner of that mark.
Section 58A: In cases where the application was accepted under prior use, the Opponent may rely on this ground to show earlier use of the mark.
No Intention to Use the Trade Mark (Section 59)
Prior Mark With Reputation in Australia (Section 60)
A trade mark may be opposed on this ground if the Opponent is the owner of a trade mark that has acquired a reputation in Australia to such an extent that the use of an identical of similar mark would likely result in deceiving or confusing consumers.
For example, the mark TRADIEBAY was successfully opposed based on Ebay Incorporated’s reputation in its EBAY trade mark.
False Geographic Indication (Section 61)
This ground may be established if the mark contains misrepresentations in relation to the origin of the goods and/or services.
False Evidence Representations (Section 62)
Under this ground, an opposition may be based on the mark being amended contrary to the Trade Marks Act or being accepted on the basis of a false representation of Evidence.
Bad Faith (Section 62A)
Finally, an accepted application may be opposed under this ground if, for example, a party has registered a mark in the knowledge that another party was already using that mark. Since this ground often deals with the consideration of the intention of the applicant at the time of filing, it can be complicated to prove.
Procedure of opposition to registration of a trade mark
(Click on the image to zoom)
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 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.
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:
- Evidence in support – filed by the opponent
- Evidence in answer – filed by the owner
- 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.
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.
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.