Protect your business, how to oppose a competitor's similar trademark application

What you need to know (in a nutshell)

1. If a competitor has applied for a trademark that is similar to your own, you have the option to oppose their trademark application.
2. There are several legal grounds for opposing the registration of a trademark, including that their trademark is substantially identical or deceptively similar to your own, not capable of distinguishing the goods/services, or likely to deceive or confuse consumers.
3. If you miss the two-month window to oppose the application or the trademark has already been registered, you can still challenge it by making an application to the Court for an order to cancel the trademark. This process is more costly and time-consuming than opposing the application during the advertising period.

Full Article

It’s not unusual for companies and people to try obtaining trademarks that are similar to existing ones, whether on purpose or by mistake. This is especially true in retail where the goal could be taking advantage of a recognised brand name but slightly altering it enough so their trademark gets approved. Nonetheless, this can happen across industries when someone finds out another competitor has filed an application for a trademark like theirs. If you find yourself in such situation, take swift action as soon as possible.

How do others obtain a similar trademark?

If IPAustralia believes a trademark application is too close to another, they raise it as an objection and notify the owner. If not found deceptively similar by them though, no objection is raised.

Businesses that find a conflicting trademark after the deadline for challenging it may still be able to take action.

If someone attempts to register a trademark similar to yours for the same goods/services, you may oppose it as an owner of a registered mark.

Grounds of opposition to registration of a trademark

A trademark registration may be opposed on the following legal grounds:

• Similar or identical to another mark, or your own.
• Unable to differentiate goods/services.
• It’s misleading to customers or creating market confusion.
• You already have a similar mark in use.
• It’s like another well-known brand in Australia.
• Scandalous or contrary to law.
• No intention to use by the applicant.

If you think your legal rights are being infringed by the trademark registration, you should file a notice of opposition. If you or no one else opposes its registration, then it will progress to registration.

Contesting a trademark application

IPAustralia, the competitor and either yourself or your business are all part of ‘opposition to registration’ process.

It is essential, within two months after the advertisement of acceptance of the trademark application, to file a Notice of Intention to Oppose if you don’t agree it should be registered. If this isn’t done and there are no objections from anyone else, registration will occur without any issues.

You must demonstrate why the trademark application should not be approved. You’ll need to use legal reasons from above and present evidence in support of your opposition.

Can we oppose a trademark if ours isn’t registered?

Even if no trademark is registered, you may have cause to oppose another’s application for a similar brand in regards to similar products/services. This could be the case if your business has been trading and gaining respectability within Australia, yet someone else applies for an almost identical mark.

Can a trademark be opposed after registration?

If you missed the two-month opposition window or found out about a competitor’s registered trademark after it was already approved, then you may file an application to have the mark cancelled in court.

If not already done so, it is advantageous to monitor trademark applications of your competitors and new businesses entering the market in lieu of waiting until a competitor advertises. This requires less money and time than taking action during an advertisement period.

Monitor competitor trademark applications

How can a business tell when its competitor has begun advertising their mark, thus beginning the window of opportunity to oppose it?

To stay up-to-date on new trademarks, it is important to check the Government Gazette and IPAustralia’s Online Trade Marks Search Database regularly. Alternatively, a broad search can be done every month for similar marks applied in Australia by paying a trademark attorney to monitor for you.

Some trademark attorneys offer for a fixed fee per month to monitor the IPAustralia database and alert clients to any conflicting trademarks that may be too similar. This way they don’t have to worry about missing the chance to oppose them.

A good trademark attorney will craft strategies for trademark oppositions that may involve sending a cease and desist letter, or negotiating with the opposed party. We also counsel clients opposing third-party applications and can file an opposition on their behalf within the prescribed timeframe.