Do you need a trademark opposition? Do you need to defend your trademark? A trademark can be the subject for trademark opposition. The most usual reasons why someone would file an opposition are:
- The trademark is quite similar or identical to another registered trademark or pending trademark.
- Likelihood of confusion or actual deception because of the reputation of an established trademark.
- The person applying for the trademark is not the owner of the trademark.
To be able to oppose a trademark you must satisfy IP Australia that at the very least, one of the above has been established. A trademark opposition is started by filing a notice of intention to oppose and a statement of grounds and particulars.
Notice of Intention to Oppose Trademark
If you are wanting to oppose a trademark that you think fits with one of the three reasons for opposition mentioned above, regarding one of your trademarks, we will need to file a notice of intention to oppose trademark. There are strict guidelines when filing this, namely:
- Filing within two months of the mark being advertised in the Australian Official Journal of Trade Marks
Statement of Grounds and Particulars
No later than one month after filing the notice of intention to oppose, you must file a statement of Grounds and Particulars. There is no fee to IP Australia for this. If a statement of grounds and particulars is not completed within one month, then the opposition will not proceed and the trademark that is infringing on your mark may be processed and registered.
Defending a Trademark Opposition
If a trademark owner has filed a notice of intention to oppose trademark against you and one or more of your marks, you may need to defend your trademark against them. This is done by filing a notice of intention to defend. There is no IP Australia charge to file a notice of intention to defend your trademark.
We have one month from when we receive the statement of grounds and particulars to file the notice of intention to defend. It the notice of intention to defend is not filed within this time, the trademark application will lapse and you will not be able to continue with the application.
After the notice of intention to defend is filed, we then have to gather evidence to prove that you have a right to use the trademark. There are a number of ways we can show this right with the correct evidence.
Evidence Used in a Trademark Opposition
There are three stages used in evidence gathering for a trademark opposition. These stages are:
- Evidence in Support – If you are opposing a mark which is similar or intentionally deceptive to your mark, you need to gather evidence to support the opposition. This needs to be gathered and filed within three months of being given a notice of intention to defend.
- Evidence in Answer – If someone is opposing your trademark, then they would have filed Evidence in Support of their opposition, as above. You then get to file Evidence in Answer to that application. We have three months from when the Evidence in Support is lodged.
- Evidence in Reply – After the Evidence in Answer has been filed, the other party then has the right to gather Evidence in Reply. We have three months from the date of the Evidence in Answer has been filed to file the Evidence in Reply.