What does it mean if someone files an opposition against my trade mark?

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What is a trade mark opposition?

  • Trade Mark Oppositions are not court proceedings, but are dispute 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 trade mark?

  • 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?

  • 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.

At MBIP we specialise in the trade mark opposition process, negotiating settlements between disputing parties and also attending Hearings if the matters can’t be resolved. Contact one of our experienced trade mark attorneys for expert advice and assistance – geraldine@mbip.com.au