Trade Mark, Patents & Designs Oppositions

Trade mark oppositions, patent oppositions and registered design rights disputes are a core capability of Actuate IP. It is what we specialise in. We are not a generalist disputes & litigation law firm. IP is what we do and what we know.

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What is the trade mark opposition period?

A trade mark application that has been filed and accepted by IP Australia for registration can be opposed by any party. There is a two month window for a party to file a trade mark opposition. The Trade Marks Act sets out specific grounds on which an opposition can be filed and relied on to argue against registration. Some of these grounds include:

that the trade mark applicant is not the owner of the trade mark
that the trade mark applicant’s use of the filed for trade mark would cause consumer confusion because of the opponent’s reputation in its own trade mark
that the trade mark applicant’s use of the filed for trade mark would be contrary to law (for example, its use would be misleading or deceptive, amount to passing off or amount to copyright infringement)
that the trade mark application was filed in bad faith

A patent application which has been accepted for grant by IP Australia can be opposed by any party. For standard patents, there is a three month window in which to file an opposition. For innovation patents there is no time limit, with an opposition able to be filed at any time after certification. The Patents Act sets out specific grounds on which an opposition can be filed and relied on to argue against registration. Some of these grounds include:

that the invention is not a patentable invention (for instance: where it is not a manner of manufacture or where it is not novel or inventive)
that the nominated person is not entitled to a grant of patent
that the patent specification is not fairly based.

What is the opposite process?

Unlike with trade marks or patents, there is no formal opposition process for registered designs. The Designs Act and Designs Regulations, however, provide a means of challenging the validity of a registered design that is essentially akin to an opposition process.

In a registered design dispute, a complaining party can request examination of a registered design prior to its certification. The complaining party can support that request with evidence prior art to argue that the design in question was not sufficiently new and distinctive, when compared to other designs that existed before the priority date.

If, after the requested examination, the registered design is accepted for certification, the complaining party is given the opportunity by IP Australia to request a hearing to dispute its certification. This process has all the hallmarks of an opposition.

How is this different from IP infringements?

Trade mark, patent oppositions and design right disputes are different from intellectual property infringement proceedings conducted in the Federal Court of Australia. These opposition / dispute proceedings are administrative proceedings conducted by the Trade Hearings Office of IP Australia.

This difference means that these proceedings conducted by IP Australia are less costly and time consuming than Federal Court proceedings but still a highly regulated process. The relevant Trade Marks, Patents and Designs Acts and their corresponding govern that process.

Your trade mark, patent and design rights are valuable rights. Those rights once registered or granted are a legally enforceable right and business asset. For these reasons, if you find yourself on the receiving end of an opposition or disputes it is important to put a strong strategy in place to defend it. On the otherhand, if you become aware of trade mark, patent or desing application filed by a competitor that is too similar to your pre-existing rights or might adversely affect your business operations, there may be a strong business case to oppose / dispute it to prevent it being registered or granted.

Like any business expense, deciding the protect trade mark rights through the trade mark opposition process requires a careful cost benefit analysis. We understand that. Our approach is to understand your business objectives, understand where any potential opposition fits within those objectives and then provide you with all your relevant options and strategic considerations.

How we can help you

Our trade mark and patent attorneys and lawyers are skilled IP dispute and dispute resolution practitioners that put in place strategies to maximise achieving a commercially favourable outcome for our clients. It is all about planning and forward thinking. As part of this, we are also resolute and strong dispute practitioners. Dispute resolution, opposition and litigation is about the details and often the nuances. The nuances – the seemingly small actions and identifiers – are often what can make the difference in achieving a favourable resolution or opposition decision.

Our Trade Mark, Patents & Designs Oppositions Team

Colin Cheung

Principal | Lawyer @ Actuate IP

Cameron Lang

Senior Associate | Lawyer @ Actuate IP

Paola Rios

Legal Projects Administrator & Trade Mark Attorney @ Actuate IP

Amy O’Bryan

Lawyer @ Actuate IP