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In the world of trade marks, it’s not uncommon to receive opposition from someone after you register it.
Let’s say you’ve just registered a trade mark for your business, and you’re still awaiting IP Australia’s approval (this is usually a 2 month period). A month later, you receive notice that someone is filing an objection to your proposed trade mark registration, claiming it is too similar to theirs.
You may believe that their trade mark is not similar to yours to the extent that it should hinder your registration. So, you decide you want to contest the objection.
This is where you’d file a Notice of Intention to Defend – read on to learn more.
What Is Trade Mark Opposition?
When someone registers a trade mark, there is a period in which it is still pending approval and other parties can object to its registration.
This is known as a trade mark opposition. Some people may object to a trade mark being registered if they think it is too similar to their own trade mark, or if another party is trying to remove their trade mark.
However, it’s worth noting that opposing a trade mark can be time consuming and costly, so it’s wise to speak to a legal professional who can chat you through your options.
How Do I Contest A Trade Mark Opposition?
If someone has made an objection to your trade mark registration, and you wish to contest it, you’ll need to file a Notice of Intention to Defend. The person opposing your trade mark is known as the ‘Opponent’, and you’d be the ‘Applicant’.
Usually, the opponent will need to file a Notice of Intention to Oppose along with a Statement of Grounds and Particulars, and these need to be submitted to IP Australia.
As the applicant, you’ll receive these statements and you’ll have one month to respond with a Notice of Intention to Defend. From here, the parties enter into the evidence stage.
Parties would then make their requests to be heard by IP Australia. It is up to the hearing officer to provide a written decision after this hearing.
If there is no hearing, then IP Australia will make the final decision in light of the facts and evidence.
What Can Be Opposed?
A number of things can be opposed according to IP Australia, such as:
- An application to register or protect a trade mark
- An application to remove a trade mark from the register
- An application for an extension of time (longer than 3 months0
- An application to amend a trade mark application
A Notice of Intention to Oppose can be filed by an interested third party, so it’s not limited to the applicant and one opponent.
Need A Lawyer?
Trade mark oppositions can be a headache, so speaking to a lawyer can help ease a lot of the stress.
At Sprintlaw, we offer a Notice of Intention to Defend package which includes:
- Drafting and filing a Notice of Intention to Defend in relation to the opposition proceedings
- Complimentary phone consultations with a Sprintlaw lawyer who will take your instructions and advise you on the relevant legal issues
If you would like a consultation on your options going forward, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no-obligations chat.
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