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Trade Mark Oppositions

Opposition Process

Once an application has been accepted by IP Australia, it’s advertised in the official Trade Marks Journal. It’s then open for a period of two months for any party to oppose the trade mark.

A “Notice of Intention to Oppose” (NIO) must be filed within the two months through the IP Australia website and the fee of $250 paid. In some circumstances, it may be possible to obtain an extension of time to file the NIO.

The party opposing the registration is referred to as the “opponent”. The losing party may be ordered to pay the other party’s costs. It’s therefore advisable to obtain professional advice before commencing an opposition or if you receive notification that someone has opposed your registration.

Statement of Grounds and Particulars

Once a NIO has been filed at IP Australia, you have one month from the date it was filed to file a Statement of Grounds and Particulars (SGP).

A SGP sets out the grounds on which the opponent intends to rely and the facts and circumstances forming the basis for each of the grounds. The appropriate form of the SGP can be obtained from the IP Australia website and should be filed electronically. If the SGP is not filed within the one month deadline the opposition will not proceed.

Assessment by Registrar

The Registrar assesses the SGP and determines whether or not the grounds are adequate for the opposition to proceed. If so, a copy of the SGP is sent to the applicant.
If the grounds are inadequate, the Registrar may give the opponent an opportunity to rectify the inadequacies or may dismiss some or all of the grounds.

Notice of Intention to Defend

Once the applicant receives the SGP, it has one month to file a “Notice of Intention to Defend” (NID). If a NID or an extension of time is not filed within the one month, the application for registration will lapse.

The appropriate NID form can be obtained from the IP Australia website and should be filed electronically. A copy of the NID is then sent to the opponent.

Evidence

The parties need to submit evidence by way of statutory declarations. Evidence submissions must be filed within the following deadlines:

  • The opponent must file any evidence in support of the opposition within three months from the date the opponent is given a copy of the NID;
  • The applicant must file any evidence in answer to the opponent’s evidence within three months from being notified of the opponent’s evidence;
  • If the applicant files evidence in answer, the opponent must then file any evidence in reply to that evidence within two months from receiving or being notified of the applicant’s evidence.

It may be possible for either party to apply for an extension of time to file their evidence, although it’s at the Registrar’s discretion whether an extension is allowed or not, so it should not be relied on.

Hearing

A hearing can be held if requested by either of the parties. The fee for requesting a hearing is currently $600 and must be paid by each party.

It will be decided by the Registrar if the hearing is an oral hearing or by written submissions.

The hearing is held before a delegate of the Registrar.

Decision

The delegate will issue a written decision with reasons either:

  • Refusing to register the trade mark on the basis that the opponent has successfully established one or more of the alleged grounds of opposition;
  • Registering the trade mark (with or without conditions or limitations) on the basis that the opponent was unsuccessful in relation to all of the alleged grounds of opposition.

Appeal

The delegate’s decision may be appealed by either party to the Federal Court.

Cooling-off period

It is possible for either party to temporarily suspend the opposition by requesting a six-month cooling-off period. This can be extended for one further six-month period.

The request can be made any time of the SGP has been filed but before the decision has issued.

If you want to find out more about trade mark infringments, have a look at this page here: progressivelegal.com.au/trade-marks/trade-mark-infringement.

 

As you can see, oppositions are a long drawn out process which can be very complex and costly. It’s therefore highly recommended that you get in touch before you start the process to ensure you are given the correct legal advice appropriate to your case.