What is a trade mark opposition?
When a trade mark application is filed and accepted by IP Australia any third party has two months in which to oppose its acceptance. Trade mark oppositions are different from court proceedings and instead are conducted by the Trade Marks Hearings Office of IP Australia. It can function as a useful dispute resolution process as an alternative to litigation or used in conjunction with pre-litigation strategies (although in some cases, litigation may still be the more appropriate course of action). Like our intellectual property litigation practice, trade mark oppositions are a core capability of this firm. A trade mark opposition can arise in two ways:
1. A competitor files for a trade mark which is accepted for registration and is too similar to your trade mark – you then file an opposition against it; or
2. Your filed and accepted trade mark application is opposed by a competitor or some other third party.
What are the grounds for opposing a trade mark registration?
Under the Trade Marks Act 1995 there are a number of set grounds under which a party can oppose registration. Some of these include:
- that the applicant is not the owner of the trade mark
- that the applicant’s use of the accepted trade mark would cause consumer confusion due to the opponent’s reputation in its own trade mark
- that use of the accepted trade mark by the applicant would be contrary to law
- that the applicant of the accepted trade mark filed the application in bad faith.
As with litigation, many oppositions are resolved prior to reaching a hearing and can provide a useful forum to open dialogue and assist the disputing parties reach a settlement. Opposition proceedings are often an effective precursor to or alternative to commencing more costly litigation proceedings. Recent changes to the trade mark opposition process also now make it a more streamlined avenue for trade mark brand owners to consider.
Why run or defend a trade mark opposition?
Your brand, your trade mark is the face of your business. Your market reputation is built up around that trade mark, so it’s worth protecting. A registered trade mark right is a strong legal right. As the owner of a trade mark registration is provides you with a strong legal platform to stop the unauthorised activities on competitors using the same or sufficiently similar trade mark. A registration is also a key asset of the business. It can be valued, sold or licensed. For these reasons, if you find yourself at the receiving end of a trade mark opposition filed against your trade mark application it is worth defending in order to achieve registration. On the otherhand, if you become aware of a competitor having filed for a trade mark application similar to your brand, there may be strong business case to oppose it. For example:
- a strategic show of strength against that competitor
- a cost effective platform to deter that competitor from planning to or continuing to use that opposed trade mark
- ensure the competitor does not achieve trade mark registration. Under Australian trade marks law by having a registration, it provides them with a defence against any claims of trade mark infringement made by you against them for a trade mark registration you might own for that or sufficiently similar brand.
Like any business expense, deciding to protect trade mark rights through the opposition process requires a careful cost benefit analysis. We understand that. We are not the type of firm that will funnel you into barreling straight into a full blown opposition process. Our approach is to instead appraise you of all your relevant options. To do this we take the time at the outset (no cost to you) to understand your business, your objectives and where the potential dispute fits within your business matrix. Armed with this knowledge we provide you with a fixed fee proposal on your options – clear and transparent pricing. We are skilled dispute resolution practitioners and when the need calls for it resolute and hard nosed IP litigators. We are strong in our approach, in your corner at all times but will also keep one eye on achieving a commercially favourable settlement for you. Dispute resolution and litigation is often about the nuances. Those seemingly small actions and identifiers are often what can make the difference in a successful opposition or enforcement strategy.
Our Approach and How it Benefits You
Whilst far less expensive than litigation, it is also no secret that running a trade mark opposition can be a costly legal exercise. This is particularly so if it is not scoped and project managed properly. An improperly scoped trade mark opposition (or worst yet – unscoped opposition proceeding) can easily spiral out of control. It is because of that uncertainty that clients are attracted to our fixed fee opposition model. Our key approach to fixed price trade mark oppositions is to fix the price of each stage. This provides clear control on those costs for you and budget certainty upfront.
We do this by treating each stage (statement of grounds, evidence in support, evidence in answer, submissions etc) of the opposition process as individual IP projects. So each stage is fixed priced on a Per-Project basis. We are able to do this because we are experienced trade mark opposition lawyers. From assessing each potential matter we know the likely paths and variables of the opposition process and can fix price for those outcomes.
We also understand that the market is changing and does not want to pay exorbitant legal fees. So we have structured our firm to meet that expectation. We utilise best practice technology to confine firm overheads to what is necessary. This means we don’t pass on unnecessary overheads into the price we charge you. As a result you benefit by paying for what is necessary – our IP skill & expertise.
HOW CAN ACTUATE IP ASSIST?
It is vital that you obtain accurate, specialist advice on how best to deal with a trade mark opposition tailored for your particular circumstances. Actuate IP will work with you to manage the trade mark opposition process. As a starting point we will invest time at the outset to understand the nature of your dispute and how it relates to your business and what your business wants to achieve from the dispute – whether you are enforcing your rights or defending a trade mark opposition made by another business against you. With this understanding we will provide you with a detailed and considered Fixed Fee Proposal that provides you with initial recommendations and fixed fee options on how to approach the dispute in a way that will achieve the right outcome for you. You can then decide whether our firm will be the right fit for your business.