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Protect your brand win your trademark battle

By James Wan

What you need to know (in a nutshell)

  1. A trademark opposition is a challenge to the registration of a new trademark, usually filed by someone who believes that the new trademark clashes with their existing trademark rights.
  2. The trademark opposition process begins when a third party files an opposition to a trademark application during the two-month opposition period after it has been accepted and published by the IP Office. Oppositions are rare, with less than 3.5% of trademark applications being opposed.
  3. If an opposition is filed, it can cause delays in the trademark registration process and may even prevent the trademark from being registered. Settling an opposition via negotiation with the applicant is often successful and is the first step that should be taken before proceeding with a formal opposition.

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In the complex world of trademark registration, oppositions can pose significant challenges. While only 3.5% of applications face opposition, these disputes can lead to delays or even prevent full registration. Qantas, the well-known airline, recently opposed a similar stylised kangaroo logo for clothing products, citing potential consumer confusion. However, after assessing the evidence, no infringement was found, allowing the application to proceed.

Once a trademark application has been examined and accepted by the IP Office, it is published for two months, during which third parties can oppose. Most oppositions can be settled amicably without escalating to a hearing process. The onus lies with the applicant to demonstrate why their trademark should be registered, while the opponent must show why it should not.

To avoid costly formal opposition proceedings, parties are encouraged to negotiate amicably during the two-month window. Extensions can be granted if more time is needed for negotiations, which often result in successful resolutions. Agreements may involve withdrawing opposition, limiting trademark use to certain industries or regions, or modifying the goods or services covered.

The Australian Trademark Opposition Process requires opponents to file a Notice of Intention to Oppose and submit a Statement of Grounds within a month. The applicant then has a month to file a Notice of Intention to Defend or agree with the opponent on a six-month cooling-off period. If the latter is not taken, the application will be rejected. Evidence from both parties is then submitted and examined, followed by a hearing and a written judgement from the Registrar of Trademarks. Appeals can be filed if parties disagree with the decision.

Trademark oppositions are not commonplace, but they highlight the importance of conducting thorough research on existing marks prior to submitting an application. This can reduce the risk of objections from IP offices or oppositions from other entities, ensuring a smoother and more efficient registration process.