If your trade mark has been accepted by IP Australia, the government agency responsible for assessing and registering trade marks, it will be advertised in the Australian Official Journal of Trade Marks. Once it has been advertised there will be an opposition period of 3 months from the date of advertisement. During these three months your trade mark application can be challenged.
Anyone can oppose your trade mark application. Should someone oppose your trade mark application, they must file a Notice of Opposition with IP Australia and serve the notice on you. The notice must set out their reasons for opposing your trade mark application. There are numerous grounds for opposing your trade mark application and they are set out in the Trade Marks Act 1995, however the most common grounds for opposing the registration of a trade mark are:
- The trade mark is identical or very similar to another registered (or pending) trade mark.
- The trade mark should have been rejected at the examination stage, and why it should have been rejected.
- There are allegations that you are not the true owner of the trade mark.
- There are allegations that you have registered the trade mark in bad faith or you do not intend to use the trade mark.
Once a Notice of Opposition has been filed and served, the opponent has 3 months to file evidence-in-support of its opposition. You then have 3 months to file evidence-in-answer to the evidence-in-support, and consequently, the opponent then has another 3 months to file evidence-in-reply to the evidence-in-answer. The evidence should be set out in declaratory, affidavit, and documentary form.
Once IP Australia has received all evidence, it is in a position to decide the matter. If neither you nor your opponent requests for a hearing before a Registrar, the Registrar can decide the matter without a hearing. The Registrar’s decision can be reviewed but only the Federal Court can review its decision. If you are successful, the trade mark becomes registrable. Please refer to The Trade Mark Registration Process (Simple and Unopposed) to see what happens after this.
Trade mark oppositions should be considered litigation. It can take up a lot of time and can also be quite costly. If you have an application which is being opposed, we can assist you by managing your case and preparing evidence and submissions in support of your application.
A flowchart of the opposition process appears below:
Download this flowchart: Trade Mark Process – Responding to Oppositions