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What do Superwog, Zara and In‑N’Out have in common in 2025? These well‐known brands have all been involved in a trade mark opposition process – a reminder that, even today, protecting your brand requires vigilance.
As you likely know, trade marks are a necessity for any business as they help your brand stand out from the rest and secure your identity. When you register a trade mark, you gain the exclusive right to use your brand name or logo within the specific class it’s registered in – a vital protection in today’s competitive market.
But what happens when you come across another trade mark that’s too similar to yours? Or what if someone believes you’ve copied their trade mark? In such cases, you may find yourself involved in a trade mark opposition – either as an ‘Applicant’ trying to register your mark or as an ‘Opponent’ filing an objection to a proposed registration.
Opposing a trade mark can be an intimidating process. It isn’t always easy to decipher the steps or know exactly what you need to do. However, by examining some notable trade mark opposition cases involving Superwog, Zara and In‑N’Out, the process becomes a little easier to grasp – and a useful lesson for any business owner.
Superman Takes On Superwog
Although this case dates back over a decade, it remains a fascinating illustration of how trade mark oppositions work in practice.
You’d think that DC Comics would be fully occupied managing fights between some of the world’s most iconic superheroes, but they also found time to stage a legal battle of a different kind against an Australian YouTube creator.
It all started when the successful local content creator Superwog made a trade mark application. He sought to register both the word “Superwog” and his logo – which cleverly incorporated a ‘W’ into the famous Superman diamond shield – as a nod to his parodic style.
Although Superwog’s trade mark was intended as a parody, it still raised eyebrows at DC Comics. The entertainment giant lodged an opposition to his applications, seeking to have them denied by IP Australia – the government agency responsible for trade mark registrations. This case serves as an enduring reminder that even humour and parody can trigger serious legal scrutiny.
While a trade mark opposition might not appear as thrilling as a superhero showdown, for business owners it’s a crucial process to keep an eye on. Major corporations continually monitor the trade mark register to ensure that their intellectual property isn’t being misappropriated – a practice that remains as relevant in 2025 as ever. For further insights into protecting your brand, you might want to read our trade mark adverse report consultation guide.
Trade mark owners, especially those with valuable brands, aggressively defend their marks – often taking a pre‐emptive strike approach to avoid even minor infringements from snowballing into larger issues. The ongoing success of Superwog – from sold-out live shows to a television series on the ABC – underscores why large corporations remain steadfast in opposing trade mark registrations that might dilute their brand equity.
So then, what are the different reasons a trade mark application might be opposed? Let’s explore some key scenarios below.
What If a Trade Mark Is Deceptively Similar to an Existing Registration?
A trade mark application can be successfully opposed if it is deemed too similar to an existing registration. In 2025, IP Australia continues to scrutinise every new application for potential consumer confusion, and in many cases, these issues are flagged before the opposition stage even begins.
Nonetheless, it is possible that IP Australia might overlook a similarity during its examination, or that an owner of an existing registration might simply object to the approval of a new mark.
This was at the heart of the widely reported Zara and Zary case. Aussie author Kay Andrews filed a trade mark application to register the name “Zary” for her children’s book character. In response, Zara – one of the world’s largest clothing distributors – exercised its right to oppose the registration.
Andrews argued there was no basis for opposition since the marks were being used in entirely different industries – hence registered in different classes. To explain: every trade mark is registered within a particular class that represents a specific industry or market. For instance, Class 25 is dedicated to clothing products, which happens to be one of the classes in which Zara holds a trade mark. Even if you secure trade mark protection in one class, others may still use a similar mark in a different class.
Relying on this argument, Andrews maintained that “Zary” would be registered for a completely different category of goods – such as toys or puzzles – and not clothing. In the end, Zara withdrew its opposition, reinforcing the principle that trade mark registrations can coexist provided they are not likely to cause confusion within the same market segment.
Other examples of coexistence include the term “MAC,” used by both MAC Cosmetics and Apple’s Mac computers, and “Dove,” employed by brands as diverse as Dove Chocolate and Dove Soap.
What Happens If a Trade Mark Is Similar to One Registered Internationally?
Another common ground for opposing a trade mark application is if it closely resembles an international registration. This was argued in the renowned In‑N’Out Burger vs Down N’ Out case. While the dispute first emerged in 2017 and continued to influence opinions in subsequent years, its lessons are still highly relevant in 2025.
In this case, the Californian chain claimed that the phrase “Down N’ Out” was unlawfully “riding on the coat-tails” of its established trade marks, reputation and branding. In‑N’Out argued that the name was so similar that customers were likely to associate it with their own brand.
Although Down N’ Out contended that In‑N’Out did not have a formal operational presence in Australia, the US chain successfully demonstrated that its brand had achieved a substantial reputation locally – through pop‑up stores and a strong online presence. Ultimately, the Federal Court ruled that Down N’ Out had infringed In‑N’Out’s trade marks by passing off as the US brand, and found their conduct to be misleading and deceptive under Australian Consumer Law.
What If a Trade Mark Has Been Applied For in Bad Faith?
Trade mark applications can also be opposed if it is evident that they have been filed in bad faith.
Remember when iconic pop star Madonna and her manager launched a fitness venture, Hard Candy Fitness? Around the same time her gym opened in Sydney back in 2015, an Australian company called “AU Hard Candy” attempted to capitalise on the name by filing a trade mark application in the very same week.
Madonna challenged the application – as detailed in this analysis of bad faith trade mark applications – arguing that the filing was made in bad faith to benefit from her well‑established brand. Her opposition was successful, with the trade mark ultimately rejected due to evidence that the applicant had a history of naming multiple businesses after international brands.
Some Other Reasons a Trade Mark May Be Opposed
There are several other reasons why an existing trade mark might be opposed:
- The trade mark is similar to an already existing, registered mark
- The mark may cause deception or confusion in the marketplace because of the reputation of another trade mark
- The trade mark applicant is not the true owner of the mark
- The mark is being registered as a defensive trade mark intended to prevent others from capitalising on the reputation of an established brand
- The trade mark may dilute or diminish the distinctiveness of a well‑known mark
How Do I File a Trade Mark Opposition?
Whether you’ve just applied to register your trade mark or you’re looking to oppose an existing application, here’s an overview of how the process works.
In Australia, when an Applicant submits a trade mark registration, there is typically a two‑month opposition period during which any interested party may file an opposition. In some cases, this time‑frame can be extended if necessary.
During this period, the party seeking to oppose the trade mark must file a Notice of Intention to Oppose. This party becomes known as the ‘Opponent’. Within one month of filing this notice, the Opponent must then submit a Statement of Grounds and Particulars to IP Australia. The Applicant will receive these documents and has one month to file a Notice of Intention to Defend.
It is the Applicant’s responsibility to defend their trade mark – failure to file a Notice of Intention to Defend results in the application lapsing and the opposition being discontinued. If the Applicant does defend the registration, the process moves into an evidentiary stage where both parties submit relevant evidence and may rebut each other’s submissions.
At this stage, either party can request to be heard by IP Australia through an in‑person, telephonic, or written hearing. After reviewing all the evidence – or if no hearing is requested – IP Australia will make its decision.
Additional Updates for 2025
Recent updates to trade mark law in Australia have refined the opposition process with clearer guidelines for evidence submission and decision timelines. As of 2025, these changes help both Applicants and Opponents better prepare their cases. It is now even more important to stay informed – our comprehensive guide to intellectual property can help ensure you’re up to date with current procedures and best practices.
What Else Do I Need to Know About Opposing a Trade Mark?
Costs
There are many costs associated with each step of the trade mark opposition process. In addition to the official IP Australia fees, you will typically incur legal fees if you engage a lawyer to assist with your case. However, in certain circumstances, the unsuccessful party may be liable for a portion of the successful party’s legal costs.
Time
The trade mark opposition process can be lengthy. In 2025, the evidentiary stage frequently takes a year or more to resolve, particularly if extensions are granted. It is important to assess whether you have both the funds and the time to see the process through to its conclusion.
Recent updates to trade mark law have enhanced transparency regarding evidence submission and decision deadlines, so staying current with these changes is key. For further insights on navigating trade mark disputes, our international trade mark advice page is a useful resource.
What To Take Away…
Trade mark oppositions remain a complex area of law, with many factors to consider before proceeding. It is essential to understand that even seemingly minor similarities between marks can incite legal challenges. Always consult a lawyer before engaging in an opposition – our expert IP lawyers are here to help you protect your brand’s reputation effectively.
For a free, no-obligation chat about your trade mark or any other legal matter, call us on 1800 730 617 or email team@sprintlaw.com.au. You can also explore our other resources on intellectual property and business set-up to ensure you’re fully prepared to defend your ideas in 2025.
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