Opposing trademarks in Australia
5 things all small business owners and start-ups need to know about trademark opposition
Did you know that any person, business or company who believes a trademark should not be allowed can oppose its registration?
In Australia, trademark opposition may happen if another person feels (amongst other things):
- They might be damaged if the proposed trademark resembles their own too closely, and
- If the trademarks are in the same geographic region, there’s a possibility consumers could confuse the products.
Quick Off The Mark® deals with opposing trademark registration everyday.
Here are our top 5 things all small business owners and start ups need to know about opposing trademarks in Australia.
1 Why you may receive trademark opposition
It can be surprising to learn that someone wants to oppose your trademark.
And it’s reasonable that your first reaction will be of personal hurt:
- “I don’t even operate in the same market or industry as they do”
- “I’ve never heard of them!”
- “What have we ever done to them?”
But there are often other issues at play that don’t have anything to do with a perceived infringement on the rights of the opposing party.
It can be surprisingly easy to resolve such disputes if this is the situation. One of the most common areas of trademark opposition or cancellation is “priority”.
This means that the person opposing your trademark believes they’ve been using the same or similar trademark before you; they believe they have superior rights to it.
2 How to find out more about why someone filed a trademark opposition
Aside from engaging a trademark lawyer who can talk to the other party or their lawyer, it can be helpful to do some preliminary investigation.
You could start by looking at:
- The challenger’s trademark application history
- The litigation history of the challenging party. If there have been prior cases, have they been resolved before going to court? If there was a settlement reached, was it a mutual compromise or did it occur because the other party gave up?
- The other parties’ businesses including the scope of territories and the size of the companies. This information will help you understand whether the two trademarks could create confusion or conflict and if so, how this potential confusion in the marketplace could be avoided.
3 Timeline of notice of intention to oppose a trademark registration
If someone believes that your trademark shouldn’t become registered they get an opportunity to lodge a notice of their intention to oppose after the government office has approved your trademark.
They will have 2 months to lodge the notice. This is calculated from the date your trademark has been advertised as accepted. They must then file (within 1 month from the filing of their notice of intention to oppose) a further statement outlining all of their grounds and particulars as to why they feel your trademark should not be allowed to register.
When a statement of grounds and particulars has been filed, you have 1 month from the date of being notified of their statement to lodge a notice of your intention to defend against the opposition.
If you fail to do so it will result in your mark lapsing and not proceeding to registration.
4 How to get an extension of time to file a notice of intention to oppose, or a statement of grounds or particulars
The time to file a notice of intention to oppose a registered trademark or a statement of grounds and particulars can only be extended if:
- There’s been an error or omission by the potential opponent or their agent
- There has been an error or omission in the Australian Official Journal of Trade Marks
- There are circumstances beyond the control of the potential opponent.
To apply for an extension of time you must file the application for an extension of time to file a notice of intention to oppose or a statement of grounds and particulars form.
You will also need to pay the relevant fees. An extension of time is not guaranteed to be granted, so you should always plan to meet deadlines.
5 How to get a cooling off period for trademark opposition in Australia
An opposition to trademark may be temporarily suspended if both parties agree to a cooling-off period.
A cooling off period is usually requested to allow negotiations to take place.
A request for a cooling-off period can happen any time after a statement of grounds and particulars has been filed but before:
- IP Australia have made a decision on the opposition or
- The opposition has been dismissed.
A cooling off period attracts no official fee and only one cooling-off period may be requested in an opposition.
The length of a cooling-off period is six months. This can be extended for a further six months, if both parties agree.
Either party can request an early discontinuance of the cooling off period.
As soon as the cooling-off period ends the trademark opposition resumes with the relevant stage of the proceedings restarting.
Need help with opposing trademark registration? With over 20 years trademark law experience our legal team has cost effective solutions. Contact Quick Off The Mark® here.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.