Understanding Trade Mark Oppositions
Registering a trade mark is a crucial step in protecting your business. However, trade mark registration isn’t always simple and can be complicated by trade mark opposition. Whether your trade mark is being opposed, or you are concerned about a new trade mark that may infringe on your rights, this post will give you an overview of how trade mark opposition works in Australia.
What is a Trade Mark Opposition?
A trade mark opposition is a legal proceeding in which an applicant’s right to register a trademark can be contested. Oppositions are filed by parties who allege that an application violates their rights or interests. Trade mark oppositions can be filed within two months of a trade mark being listed as accepted. An opposition is started with a document called a notice of opposition, which identifies various grounds for denying the trademark registration.
Some Reasons for Trade Mark Opposition
There are many reasons why a trade mark opposition would take place. Some common reasons include:
- Similarity to another registered or pending trade mark
- The trade mark is likely to cause confusion with another registered trade mark that has an established reputation
- The trade mark applicant does not truly own the trade mark. To oppose a trade mark on this ground, the opponent may prove that it has been using the trade mark prior to the application
Other reasons, which may not be as common, include:
- The trade mark containing offensive or scandalous matter
- The trade mark containing prohibited symbols, such as symbols of the Australian Federal or State governments
- The application being made in bad faith, with the knowledge that the trade mark is already in use. However, this can be difficult to substantiate with evidence
However, this is not a complete list of reasons that a trade mark opposition may be filed. Therefore, it is important to get in touch with an attorney who is familiar with the grounds for trade mark opposition, whether your trade mark is under threat, or there is a trade mark you would like to oppose.
How to Overcome Trade Mark Opposition
Trade mark oppositions can be avoided by seeking advice early, prior to registering the trade mark. If you have a trade mark application pending with IP Australia, you should seek the advice of an experienced trade mark attorney or IP lawyer to ensure that your proposed trade mark can be registered. Similarly, the advice of a trade mark attorney can ensure that your trade mark stays protected by advising on whether you should file an opposition, and on what grounds.
At Hazan Hollander, our team specialises in both opposing trade mark applications and defending trade mark oppositions. To get in touch, you can call us in Melbourne on (03) 8538 1676, in Sydney on (02) 9233 4266, or alternatively, submit an online enquiry below