Trade marks

Trade Marks Oppositions

Trade Marks Oppositions occur when an aggrieved party believes a particular mark is not entitled to registration as a trade mark due to one or more legal reasons.

Typically, oppositions are launched by companies with similar marks wishing to protect their brand from similarly identifying market entrants or in instances where a new company may seek to leverage on the reputation of an established company without consent.

A lot is at stake in trade mark oppositions and the process can become drawn out and expensive.

It is also important to be aware that costs for legal fees, attorney fees and other disbursements may be awarded against the losing party by the register which may be substantial.

Therefore, it is important to seek professional advice from a trade marks attorney early on to prevent your application being prejudiced or to stop a potentially problematic application from gaining registration status – which can be a lot more difficult to remove at a later time.

 

I have received notice that someone intends to oppose my trade mark application, what should I do?

It is important that when served with a letter or notice regarding a trade marks opposition that you do not prejudice your position or standing by providing information to the other party which may be used against you. The first thing you should do if you are unfamiliar with trade marks law is to consult a trade marks attorney or your solicitor (preferably a solicitor well versed in I

 

How to defend a trademark opposition?

Defending a trade mark opposition begins with filing a Statement of Intention to Defend. Without the filing of this important document, the opposing party will automatically succeed and the application for the trade mark in question will lapse.

Once a statement of intention to defend is filed, evidence will then need to be filed by each of the parties. There are three stages of evidence:

  1. Evidence in Support: Filed by the opposing party in support of the propositions outlined in the notice of Intention to Oppose
  2. Evidence in Answer: Filed by the trade mark applicant to support the original registration; rebuts evidence in support of the opposition
  3. Evidence in Reply: A final opportunity for the opposing party to submit further evidence and respond to any arguments from the evidence in argument.

 

In defending an application you will need to tender evidence to IP Australia against the propositions of the opponent. The type of evidence to be submitted will all depend on the grounds of opposition.

How long is the trade mark opposition period?

The opposition period is two months from the period in which a trade mark application was advertised. Previously the period was three months however as at April 15, 2013 new reforms mean that the period has been shortened.

Under extremely limited circumstances, an extension may be granted under exceptional circumstances – including:

  1. a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
  2. b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
  3. c) an order of a court or a direction by the Registrar that the opposition be stayed.

Generally, as an opponent it is important to file the Notice of Intention to Oppose as quickly as possible to ensure compliance with the opposition period.

How much does a trademark opposition cost?

Trade Mark Oppositions, like applications, comprise of two or three sets of fees:

  • Statutory Fees and other disbursements for filing, requesting a hearing and for extensions: Typically these fees vary from $150 per disbursement up to $600.
  • Attorney Fees: To achieve a reasonable prospect of success in commencing or defending opposition proceedings a qualified trade marks attorney will generally engage with the client – typically for the whole proceeding the cost for attorneys fees may reach even tens of thousands of dollars depending on the complexity of the matter. Relevantly experienced solicitors will generally charge similar rates.
  • Barrister Fees: Barristers are typically engaged for hearings and in some cases, during the course of providing evidence. Clients can expect to pay several thousand dollars per day thereof that a barrister is engaged.

What costs may be awarded in an opposition proceeding?

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