What Does it Mean if Someone Files an Opposition Against my Trademark?
Throughout the years we have had many clients who have come to us after receiving notice that their trademark is being opposed. If you find yourself in this position, here’s what you need to know.
What is a trademark opposition?
- Trade Mark Oppositions are not court proceedings, but are disputed proceedings conducted by the Trade Marks Office (IP Australia). There are several evidentiary stages whereby each party is able to support their case by submitting written evidence. Many oppositions are resolved during the process and the disputing parties reach a settlement. If settlement is not reached the opposition will be resolved with a Hearing, and a Hearings Officer makes a decision as to whether or not the opposition has been successful.
Who can oppose my trademark?
- When a trade mark application is accepted by IP Australia, it becomes open to opposition by third parties/a competitor, for a two month period
- The third party needs to have solid grounds/reasons for opposing your mark – for example, they may allege that you are not the true owner of the trade mark or, if they have a similar mark, they may allege that consumer confusion will arise if you are allowed to register your mark due to their reputation in their similar mark.
What do I do?
- Don’t panic! Once you have become aware of the grounds on which the other party is relying in their opposition to your mark, you need to decide whether or not you wish to defend the opposition.
- Deadlines are crucial – you only have a month window in which to file a Notice of Intention to Defend the opposition, after you have received a statement of the grounds the other party is relying on – if you don’t file the Notice by the deadline, the opposition will be deemed successful and your application will lapse.
Many well-known brands have encountered oppositions but it doesn’t have to mean the end of the road for your trademark. Sometimes there are workarounds. Engaging with a competent attorney early on can help in achieving a favourable outcome.
We recommend seeking advice from an attorney experienced in the trade mark opposition process, who can negotiate settlements between disputing parties and also attend Hearings if the matters can’t be resolved.