A trade mark application is able to be opposed after the trademark application has been accepted by the Trade Marks Office.
The timing and procedure associated with lodging an opposition to a trade mark application is detailed below.
Timing and Procedure
Notice of Intention to Oppose
The opponent must file a notice of intention to oppose within two (2) months of acceptance of the trade mark application being advertised in the Official Journal.
Statement of Grounds and Particulars
The opponent must file a statement of grounds and particulars within one (1) month of filing the notice of intention to oppose.
The Trade Marks Office will request further information in circumstances where the statement of grounds and particulars is not sufficiently particularised.
A request to amend a statement of grounds and particulars is subject to approval of the Trade Marks Office. Requests to amend or add a new ground of opposition will only be granted if related to information that the opponent could not have been reasonably aware of at the time of filing the Statement of Grounds and Particulars.
Notice of Intention to Defend
The applicant must file a notice of intention to defend the trade mark application within one (1) month of receiving the notice of opposition.
In the case of a Madrid Protocol Trade Mark Application (IRDA), the applicant must provide the Trade Marks Office with an address for service in Australia.
Evidence in Support
The opponent must file evidence in support of the opposition within three (3) months of receiving the notice of intention to defend the trade mark.
Evidence in Answer
The applicant must file evidence in answer within three (3) months of receiving the evidence in support.
Evidence in Reply
The opponent must file evidence in reply within two (2) months of receiving the evidence in answer.
Opportunities to file further evidence are restricted. In some circumstances the Trade Marks Office may decide to inform themselves on any matter that is presented and reasonably believed to be appropriate.
The opponent and applicant may seek to be heard at a hearing before the Trade Marks Office. The hearing may be held in person, by telephone or by teleconference.
Form of Evidence
Evidence must be provided in the form of a statutory declaration. If evidence is not provided in the form of a statutory declaration, the evidence is likely to be disregarded.
Notices regarding the conduct of the opposition generally contain a direction that ‘information filed and properly identified as confidential is restricted to those persons who reasonably need to see it for the purposes of the opposition’. Failure to observe the notice may result in legal action for breach of confidentiality.
If the evidence is filed conditionally and the receiving party does not agree to the conditions, the Trade Marks Office may refuse to take evidence into account. In this regard it is possible to request that a party sign a confidentiality agreement before confidential information is filed and received.
Notably, the Trade Marks Office generally does not consider it reasonable for conditions of a confidentiality agreement to require that only the legal representative of a party view the information.
The Trade Marks Office will not take into account information where a party is not able to view it.
Information may be requested by a third party under the Freedom of Information (FOI) Act.
Extensions of Time
Exceptional circumstances are generally required to justify an extension of time.
Generally, the party must: (i) have made all reasonable efforts to comply with all of the relevant filing requirements; and (ii) is unable to do so despite acting promptly and diligently at all times to ensure the filing of the evidence within the period.
Cooling Off Period
If the parties agree, a trade mark opposition may be placed into a state of suspension for a ‘cooling off period’ of 6 to 12 months.
Only one ‘cooling off period’ is allowed during the course of an opposition.
When a ‘cooling off period’ is terminated, the timing recommences at the beginning of the suspended stage of the opposition.
After a hearing, the Trade Marks Office will issue a decision on the written record. An example of a decision concerning a successful defence to a trade mark opposition handled by our firm is available here.
Award of Costs
The Trade Marks Office may award costs to the successful party. Costs are awarded at scale.
The Trade Marks Office may require security for costs from the opponent if: (i) the opponent neither resides nor carries on business in Australia; and (ii) a security for costs request is made by the applicant.
*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.