Trademark Oppositions

This article was updated on 20 November 2016.

After trademarks have been accepted for registration by IP Australia, that’s not the end of the story. Other traders have the right to object to the registration. In this article, we give answers to some frequently asked questions about oppositions to trademark registrations. In this article, we give an introduction to trademark oppositions by answering the following FAQs.

What is a trademark opposition?

A trademark opposition is a proceeding in which a third party can oppose the registration of any application under the Trade Marks Act 1995, including an application to register a trademark.

For example, once a trademark is accepted for registration by IP Australia, this fact is advertised in the Official Journal of Trade Marks before it is actually registered. This kicks off a two month period known as the ‘opposition period’ during which other parties are then given an opportunity to ‘oppose’ the registration of the trademark.

In many ways, an opposition proceeding is like a ‘mini-trial’ that is conducted by IP Australia. Parties file evidence and make legal submissions about whether the trademark should or should not be registered. A small number of oppositions are decided after an oral hearing, although most are determined without one (i.e. most are based solely on written submissions).

Who can oppose a trademark application?

Any person, company, incorporated association, or group of persons can file an opposition to a trademark application. The person bringing the opposition (the ‘opponent’) does not need to be the owner of a similar mark, and does not need to have any sort of legal or commercial interest in the outcome of the opposition in order to file the opposition.

On what grounds can a trademark application be opposed?

The registration of a trade mark can be opposed on numerous grounds, including -

• that the trademark is not distinctive;
• that the trademark is substantially identical or deceptively similar to another registered trademark;
• that the applicant does not in fact own the trademark;
• that the use of the mark would be likely to cause confusion or deception because of the reputation in another mark.

What is the process for trademark oppositions?

Although not all opposition proceedings follow the same path, the following steps are common to many oppositions:

1. Notice of Intention to Oppose

Oppositions are commenced with the filing of a ‘Notice of Intention to Oppose’ with IP Australia. The person wishing to oppose the trademark (the ‘opponent’) must usually file this document within two months from the day on which the acceptance of the application has been advertised. Extensions are available in certain very limited circumstances. There has been no fee for filing a Notice of Intention to Oppose since 10 October 2016.

2. Statement of Grounds and Particulars

The opponent must file a second document, known as the ‘Statement of Grounds and Particulars’ or ‘SGP’ within one month of the filing of the Notice of Intention to Oppose. If this document is not filed, then - unless an extension is available - the opposition will not proceed any further.

The SGP must nominate the grounds under the Trade Marks Act 1995 upon which the trademark is being opposed. It must also set out ‘adequate particulars’ of these grounds. ‘Particulars’ are the details of the material facts which are alleged by the opponent, and which give trademark applicants information that enables them to understand the case they will be presented with. For example, a trademark can be opposed under section 43 of the Trade Marks Act 1995 on the grounds that it has a connotation that would be likely to deceive or cause confusion. The particulars would need to describe the connotation in the mark that would lead to the deception or confusion.

There is no fee for the filing of a SGP from 10 October 2016 onward.

3. Notice of Intention to Defend

Once an opponent has filed a notice of opposition the applicant must file a ‘Notice of Intention to Defend’ with IP Australia if they wish to contest the opposition and maintain their rights. If this document is not filed within one month from the filing of the SGP, then the trademark application will lapse. IP Australia will then provide the notice to the other opponent.

4. Evidence in Support

The next step normally involves the opponent filing the ‘Evidence in Support’ of the opposition. Evidence is submitted in the form of signed declarations by individuals which attempt to prove the facts upon which the opposition is being brought. The declarations would normally refer to and attach relevant documents, which may include things such as advertisements, contracts and website screenshots.

The evidence must normally be submitted within three months from the date on which IP Australia provided the Notice of Intention to Defend to the opponent.

The evidence is submitted to IP Australia using the online ‘Objective Connect’ service, and IP Australia then makes it available to the opponent.

5. Evidence in Answer

The applicant then has three months in which to respond. This could involve either:

• serving the opponent with a copy of a notice stating that no ‘evidence in support’ will be relied upon; or
• serving a copy of the ‘evidence in answer’ on the opponent.

In any event, the applicant must file the original notice or original ‘evidence in answer’ with IP Australia.

‘Evidence in answer’ is any evidence upon which the applicant would like to rely to support the registration, and is usually given in the form of statutory declarations. The evidence in answer does not need to be restricted to the matters raised in the evidence in support.

6. Evidence in Reply

The opponent then has a further two months in which to respond by either:

• serving the applicant with a copy of a notice stating that no ‘evidence in reply’ will be relied upon; or
• serving a copy of the ‘evidence in reply’ on the applicant.

The evidence in reply must normally be confined to responding to the facts alleged in the evidence in answer.

7. Determining the matter

After the closure of the ‘evidentiary’ stage, the matter must be decided by the Registrar of Trade Marks or a Delegate of the Registrar. IP Australia will normally set a deadline for each of the parties to request a hearing, or to provide written legal submissions relating to their case. Unless very special circumstances exist, no new evidence can be introduced from this point onward.

If neither party requests a hearing the decision is normally made on the ‘written record’ (i.e. by considering the written evidence and submissions on the IP Australia file). Most trademark oppositions are decided on the written record.

A hearing provides an opportunity for the parties to make their case in person, and to call witnesses etc. The parties can attend by telephone or video conference. Usually, the parties will be represented at the hearing by a trademark attorney, solicitor or barrister.

The determination involves a decision to:

• reject the application;
• accept the application subject to conditions or limitations;
• accept the application without any limitations.

There is normally a delay between hearing or closing of submissions and the handing down of the decision.

8. Appealing

A party who is unhappy with the decision has the right to lodge an appeal with the Federal Circuit Court or the Federal Court of Australia. The appeal must be lodged within 21 days of the decision.

What costs are involved in trademark oppositions?

There are a number of costs associated with oppositions to the registration of trademarks.

1. Official fees

Official IP Australia fees are payable in relation to a variety of different events. For example there are fees for:

• filing a notice of opposition (currently $250);
• obtaining extensions of time for various deadlines (currently up to $150 per month or part month);
• requesting the right to be heard at a Hearing (currently $600);

2. Professional fees

Trademark oppositions are extremely technical, and it is highly recommended that you have the assistance of a trademark professional such as an IP lawyer or trademark attorney. If you engage a lawyer or trademark attorney, there will also be fees associated with tasks such as:

• the preparation of statutory declarations;
• the filing and service of documents;
• the preparation of written submissions;
• any attendances at hearings.

Finally, the unsuccessful party may be liable to pay a portion of the successful party’s legal costs in certain circumstances (see below).

Can I recover any of my costs from the other party if I’m successful?

Yes. ‘Costs’ are normally awarded against the unsuccessful party.

They are awarded up to the limit of the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, and as such usually cover only a portion of what the successful party is actually charged by their legal advisers (the official scale being lower than the market rate charged by IP professionals). According to IP Australia, in May 2010 the average award of costs is currently between $2,000 and $3,000 but if a hearing is conducted, these typically rise up to $5,000.

Legal costs of the successful party are not always awarded. For example, they are not usually awarded if an opposition is resolved prior to being decided by IP Australia. Further, they are only awarded if the successful party has actually engaged and paid a third party (including IP Australia or a lawyer). Parties who represent themselves cannot recover the costs associated with the time spent on the opposition.

How long do trademark oppositions take?

Trademark oppositions are a form of legal proceeding, and take time to resolve. The timing is in part driven by how promptly the parties submit their evidence, and it’s usual for the various rounds of evidence to be submitted right on their respective deadlines. Extensions of time can be granted for the preparation of evidence in various circumstances, and since 2013 it’s also been possible to suspend oppositions by obtaining a ‘cooling-off period’ (see below for further information).

All in all, it’s quite common for oppositions to take over 12 months to reach a conclusion.

What is a cooling-off period?

A cooling-off period involves suspending an opposition proceeding to give the parties an opportunity to reach a compromise through negotiations. If the parties both request a cooling-off period, then IP Australia must allow one. Initially it is granted for a six month period, although one six month extension is available if both parties request it. An opposition period is discontinued upon the request of either party.

Do you need help with a trademark opposition?

Epiphany Law is a boutique intellectual property law firm which works almost exclusively on the basis of fixed fee quotations. Please contact us if you need to oppose or defend the registration of a trademark.