Trade Mark Opposition

In Australia, any third party can challenge the registration of a trade mark by filing an opposition with IP Australia, the government agency responsible for managing intellectual property rights in Australia. This is usually done within two months of the trade mark being accepted.

Oppositions can be filed on various grounds, including:

• Confusion with an existing registered trade mark
• Deceptiveness or false suggestion of a connection with another business or product
• Similarity to a well-known trade mark
• Lack of distinctiveness, for example if a trade mark is too descriptive
• Unlawful use of a trade mark
• If a trade mark was filed in bad faith

Naturally, not all trade mark oppositions are successful and the outcome of an opposition will depend on the particular facts and circumstances of the case and whether the opponent can successfully demonstrate the grounds for opposition.

In some cases, the trade mark owner may choose to withdraw the application, negotiate a settlement with the opponent. In other cases, the trade mark owner will choose to defend the opposition by investing the time and resources in fighting back, and ultimately have their trade mark registered.

We can provide legal advice on the best course of action if your trade mark is being opposed or if you wish to oppose someone else’s trade mark. We help you understand your rights and obligations under the law and advise you on the likelihood of success in your opposition.

We also prepare evidence in support of oppositions, respond to requests for further information or evidence, draft submissions for Trade Marks Office hearings and appear on your behalf at those hearings. We have had over 25 experience in trade mark opposition work, are familiar with the process and all the latest relevant case, and understand the most recent laws and strategies to give you the best possible outcome.

We present clients in opposition proceedings before the relevant authorities, such as IP Australia.

This includes preparing and presenting arguments and evidence to support your opposition, responding to the other party’s arguments and evidence, and sometimes, negotiating a settlement, if that is what you want. This can involve negotiating a co-existence agreement or other compromise with the other party.

Overall, we can provide a range of services related to trademark oppositions in Australia, from providing legal advice and preparing and filing oppositions to representing clients in opposition proceedings and enforcing trade mark rights.

Why use a law firm to conduct a trade mark opposition- why not do it yourself?

There are several reasons why you should consider engaging a trade mark lawyer to conduct trade mark oppositions in Australia, rather than attempting to do it yourself, which include:

• We have the legal expertise and experience necessary to navigate the complex legal and procedural requirements of trade mark opposition proceedings and we understand that principles and case law relevant to trade mark oppositions.
• We provide strategic advice on whether to oppose a trade mark registration, or how to defend against an opposition. They can advise on the strengths and weaknesses of your case, and help you to develop a strong legal argument.
• Trade mark opposition proceedings involve strict procedural rules and timelines. Failure to comply with these requirements can result in your opposition being dismissed and the parties’ mark being registered or your mark being refused registration. We ensure that all procedural requirements are met and that your case is presented in the most effective way possible.
• Trade mark opposition proceedings can be time-consuming and costly – we ensure that your resources are used efficiently, by focusing on the strongest legal arguments and avoiding unnecessary costs.
• Overall, engaging our firm instead of doing it yourself can help to ensure that your trade mark opposition is conducted effectively and efficiently, and maximises your chances of a successful outcome.