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Trademark oppositions in Australia a quick guide

By James Wan

What you need to know (in a nutshell)

  1. Trademark oppositions are a formal process in which one trader lodges an opposition against another trader’s trademark being registered with IPAustralia.
  2. It’s important to understand that trademark oppositions can be both time-consuming and expensive exercises and a successful opposition isn’t the same as preventing trademark infringement.
  3. It’s recommended to seek out a professional trademark attorney or trademark expert to deal with oppositions as mistakes can lead to negative consequences that are difficult and costly to fix.

Full Article

As a trademark holder, familiarise yourself with oppositions: IP Australia’s formal process of one trader objecting to another registering their trademark. It brings protection and responsibility for your brand.

When dealing with trademark oppositions, understand they’re costly and time-consuming. Opposition does not prevent infringement - separate court proceedings are needed for that. IPAustralia has jurisdiction over opposition decisions; courts adjudicate formal infringement claims.

Representing oneself in an opposition proceeding is not recommended.

Seeking professional trademark advice is essential for successful oppositions as mistakes can have serious, costly consequences.

Reasons to deny trademark.

The Trademarks Act 1995 details grounds opposing trademarks, often concerning similarity or confusion.

For example, brands like Coca-Cola oppose trademark applications even if trademark classes differ when they perceive similarity to their trademark. Most oppositions relate to goods/services of both parties. Someone may file a Notice of Intention to Oppose a trademark if they feel it’s generic/descriptive, or risks confusion due to Coca-Cola’s reputation. This can occur even with unrelated products/services as exclusive rights on generic terms could limit other traders’ business operations.

When can one oppose a trademark?

IPAustralia must accept a trademark before the opposition can be lodged. The public has two months, extendable on request, to oppose after the advertisement of acceptance of the trademark application.

IPAustralia may not notify you of similar trademarks accepted, so oppose promptly. Also, monitor trademark databases/journals.

What trademarks can be opposed?

Two months after trademark acceptance, any trademark may be opposed. Extensions of time are sometimes available, but not guaranteed.

IPAustralia can oppose applications for trademarks and other things. Most often opposed are those registering new trademarks.

File trademark opposition.

It’s advised you use an expert to attend oppositional proceedings; this ensures correctness and increases chances of success.

File the Notice of Intention to Oppose trademark within two months of acceptance being advertised in Australian Official Journal of Trade Marks.

What’s trademark opposition cost?

We advise using a solicitor or trademark professional to navigate the complex, lengthy opposition process. Technical errors from going it alone can have serious consequences; even more so if the opposing party has representation.

Factors influencing costs ascertained by:

Costs of opposition proceedings range between AUD $5K to 15K, more if an oral hearing and barrister’s attendance are involved. Keeping costs lower means some omitting steps are required.

Cases differ, sometimes necessitating legal submissions & hearings. Who the other party is and their investment in representation usually decides this. Opposition procedures typically last 18 months. The fees may be staggered across this time.

If opposed, what should you do?

Get professional advice before responding to trademark opposition, as this will assess its merit and provide options.

Once an opponent files their statement of opposition, we can assess trademark history and start formulating a defence. This will help gauge the chances of defending the opposition successfully to acquire registration.

Using a professional IP expert/solicitor can save time, money & stress by negotiating with the opposing party. This avoids lengthy opposition proceedings without guaranteed outcomes if trademark rejection appears likely.