Trademark Opposition
What is a Trademark Opposition?
A trademark opposition is a challenge to stop the registration of a new trademark. An opposition is usually filed by someone who believes that a trademark shouldn’t be registered because it clashes with their trademark rights.
Serving as an example, Qantas, the well known airline who uses and has registered a stylised kangaroo logo for “advertising and marketing services” (among other things), opposed a trademark application for a somewhat similar stylised kangaroo logo filed by someone else which covered clothing. Despite the fact that both marks were for a stylised kangaroo, the opposition failed because it was held that consumers would not be confused due to the differences between the marks themselves and the fact that they covered dissimilar goods and services.
Trademark opposition process
Once a trademark application has been examined and accepted by the IP Office, it is published for a time period of two months within which third parties may oppose the trademark. This is called the opposition period. Usually,there is little need for concern as oppositions are very rare - less than 3.5% of trademark applications filed are opposed. How long will my trademark application take? - refer to the flowchart on this page to see the stages of the process visually.
When a trademark opposition has been filed, it can cause serious delay in the trademark registration process, and in the worst case scenario, could even prevent a trademark from being registered. Nonetheless most oppositions are settled between the two parties as a result of a negotiated agreement without proceeding to a hearing.
An opponent may file a full opposition, in which the opponent challenges all the goods and services covered by the application or it may be a partial opposition - for only some of the goods and services covered.
In the event of an opposition, the onus is on the applicant to show that the trademark is registrable.
When is a trademark not registrable? – read this article to check whether or not your trademark can be registered.
Settling oppositions
Ideally, as a first step, the potential opponent should first reach out to the applicant privately and try to resolve the matter amicably before proceeding with a formal trademark opposition, which involves costs. The two-month opposition period is intended to provide sufficient time for such discussions to be concluded. If more time is needed, It is possible to apply for an extension of this time.
These discussions are often successful - an opponent may be willing to withdraw an opposition if you agree not to use your trademark in their particular industry, within a certain geographical area, or if you agree to modify the goods and services covered by your trademark.
The Trademark Opposition Process in Australia
Once an opponent decides to file a trademark opposition, the process is as follows the steps outlined in the list and diagram below:
The opponent files a Notice of Intention to Oppose.
Within one month, the opponent must file a Statement of Grounds which summarises the opponent’s position and the evidence which will be filed in support of the opposition.
Within one month, the applicant must file a Notice of Intention to Defend the opposition, OR the parties may jointly agree to a 6-month cooling off period (during which proceedings will be suspended) and notify the Registrar of this decision. The application will be rejected if neither of these options is taken.
Within three months of the Notice of Intention to Defend being filed, the opponent must file evidence in support of the opposition.
Within three months, the applicant must file any evidence in answer.
The opponent may file evidence in reply within two months.
Once all evidence is completed, the matter will be heard - either at an oral hearing or by filing of written submissions.
After the hearing, the Registrar will issue a written decision and the parties may file an appeal.
As mentioned, trademark oppositions are not often filed. If your trademark is opposed, there’s often an opportunity to negotiate a settlement with the opponent before having to file evidence or attend a hearing.
To minimise the chances of receiving either an Trademark Office objection or a trademark opposition, you should conduct a thorough trademark search before you submit your application. Here are 5 ways to do this: How to Conduct a Trademark Search