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What is a Trade Mark Notice of Intention to Oppose and How Do I Respond?

What is a Trade Mark Notice of Intention to Oppose and How Do I Respond?

Posted 29 April 2022 by Cameron Lang

Categories: Trade Mark, Patent & Design Oppositions

After your trade mark application has been examined and accepted by IP Australia (www.ipaustralia.com.au), there is a two month window during which it can be opposed by other people or companies. If it is opposed, you will receive a notice from IP Australia informing you that a ‘Notice of Intention to Oppose’ has been filed. This article will set out the early stages of the trade mark opposition process and what you need to do in order to respond to a Notice of Intention to Oppose and defend your trade mark application.

Who can oppose my trade mark application?

Any person or company can file an opposition against your trade mark application. However, the opposition needs to be based on one or more of the ‘opposition grounds’ set out in the Trade Marks Act 1995 (Cth) (Trade Marks Act). Some of the most common opposition grounds include where:

  1. Your trade mark is descriptive of the goods or services claimed (section 41 of the Trade Marks Act);
  2. There is an earlier trade mark application or registration for a substantially identical or deceptively similar trade mark which claims the same, similar or closely related goods or services (section 44 of the Trade Marks Act);
  3. Another trade mark had, before the priority date for your trade mark application, acquired a reputation in Australia and because of that the use of your trade mark would be likely to deceive or cause confusion (section 60 of the Trade Marks Act);
  4. The use of your trade mark would be scandalous or contrary to law (section 42 of the Trade Marks Act); and
  5. Your trade mark application was filed in bad faith (section 62A of the Trade Marks Act).

Stage 1 - Notice of Intention to Oppose

This is the first thing that the opponent – that is, the person or company opposing your trade mark application – will need to file in order to begin the opposition process. You will be sent a copy of the Notice of Intention to Oppose by IP Australia. The Notice of Intention to Oppose will identify who the opponent is, and which trade mark applications they are opposing. However, it generally does not identify the opposition grounds which the opponent relies on.

NOTE: Once you have identified who the opponent is, you can do a search of the IP Australia trade marks register to see whether they have any trade mark applications or registrations of their own. This can often provide some clues about the reasons for the opposition, and it may also reveal competing trade mark applications which you should monitor and/or consider opposing yourself.

Stage 2 – Statement of Grounds and Particulars

The opponent will then need to file a ‘Statement of Grounds and Particulars’ within one month of filing their Notice of Intention to Oppose. The Statement of Grounds and Particulars will set out the opposition grounds which the opponent relies on – in other words, the legal basis for their opposition. You will be sent a copy of the Statement of Grounds and Particulars by IP Australia (once they have processed this, which can take some time). If the opponent doesn’t file a Statement of Grounds and Particulars then the opposition will lapse and your trade mark will proceed to registration.

Stage 3 – Notice of Intention to Defend

Once you have received a copy of the opponent’s Statement of Grounds and Particulars, you will then have one month to file a ‘Notice of Intention to Defend’. This lets IP Australia and the opponent know that you intend to defend the opposition against your trade mark application. If you do not file a Notice of Intention to Defend then the opposition will be successful and your trade mark application will lapse (late filing of a Notice of Intention to Defend may be an option in exceptional circumstances). As a result, it is very important that your Notice of Intention to Defend is filed in a timely manner.

NOTE: While you do not have to pay a fee for filing your Notice of Intention to Defend, there could be fees payable at a later stage of the opposition (for example, if you wish to participate in a hearing). In addition, if you are unsuccessful in the opposition, you may be ordered to pay some of the opponent’s legal costs. We recommend seeking legal advice about this prior to filing your Notice of Intention to Defend.

Later stages – evidence and hearing

After you have filed your Notice of Intention to Defend, both parties will have an opportunity to file evidence. Generally speaking, the process for this is:

  1. The opponent will have three months (from receiving your Notice of Intention to Defend) to file its ‘Evidence in Support’ of its opposition;
  2. You will have three months (from receiving the Evidence in Support) to file your ‘Evidence in Answer’ in support of your trade mark application; and
  3. The opponent will have two months (from receiving the Evidence in Answer) to file any ‘Evidence in Reply’ to your Evidence in Answer.

After the evidence stages are completed, both parties will have an opportunity to request and participate in a hearing before an IP Australia Hearing Officer.

Key Takeaways

In order to oppose your trade mark application, the opponent must first file a Notice of Intention to Oppose and then a Statement of Grounds and Particulars. Once you have received the Statement of Grounds and Particulars, you will then need to respond by filing your Notice of Intention to Defend within one month. It is important that you do this in a timely manner, otherwise your trade mark application will lapse, which could have significant impacts on the trade mark protection available to your business.

Actuate IP has a team of intellectual property experts who can assist with Trade Mark, Patents & Designs Oppositions. If you require assistance, you can contact our team on (03) 9098 0713 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.

FAQs

Who can oppose my trade mark application?

Any person or company can file an opposition against your trade mark application. However, the opposition needs to be based on one or more of the ‘opposition grounds’ set out in the Trade Marks Act.

What do I need to do if I receive a Notice of Intention to Oppose?

Once you have received both the Notice of Intention to Oppose and the Statement of Grounds and Particulars, you will need to respond by filing your Notice of Intention to Defend, and it is important that you do this in a timely manner.