Trademarking can protect the brand names, logos, shapes, colours, figures, scents or even movements that you use to distinguish your business from other entities, however what happens if someone else attempts to obtain protection for a similar mark?

If you think an accepted trade mark application is too similar to your own, or if you own a mark with another party is attempting to remove, you may be able to protect your IP by filing an opposition.

Generally, there are four things that may be opposed:

  1. An application to register or protect a trade mark that has been advertised as accepted.
  2. An application to remove a trade mark from the register because it has not been used.
  3. An application for an extension of time of more than three months (under section 224 of the Trade Marks Act 1995).
  4. An application for an amendment to a trade mark application (under section 65A of the Trade Marks Act 1995).

Opposing a Trademark Application

If a holder is seeking protection for a mark similar to your own in the same class of goods, IP Australia will firstly issue an adverse examination report to the holder of the proposed mark. The holder of the proposed mark will then be required to provide evidence to overcome the adverse examination, and if the evidence is successful, the mark is accepted and will proceed to an opposition period.

If IP Australia has already issued the adverse examination report on the basis that the mark is likely to cause consumer confusion due to significant similarity with your mark, you will be notified that the proposed mark has been accepted and will be given two-months to file a Notice of Intention to Oppose the registration. This has the effect of notifying the registrant of the proposed mark that you intend to oppose the registration, should they not withdraw their application.

If the holder refuses to withdraw their application, you can then formally oppose the mark on one or more of the following grounds:

  • The trade mark is identical or very similar to your mark;
  • The trade mark is likely to cause deception or confusion to the public with your mark; or
  • The applicant for the new trade mark is not the true owner of the mark.

IP Australia will then schedule an Opposition Hearing for both parties to present their evidence on why the mark should be protected and why the mark should be refused respectively. The outcome of this hearing is final and will determine if the mark will be registered and published, or withdrawn. This process can be complex, timely, and costly, so we recommend obtaining legal assistance should you wish to oppose a trade mark registration.

It is important to note that IP Australia is not responsible for notifying you of potential infringements to your trade mark, and some marks may be granted protection without your knowledge. For this reason, you should continue to monitor the market for potential infringements yourself.

Removing an Unused Mark

If you are seeking to register a trade mark, however a similar mark has already gained protection, you may have an avenue to make a non-use application to remove the earlier mark if it has not been used in the market.

An applicant can apply to remove a trade mark if the owner of the mark:

  • had no intention to use the trade mark and the owner has not used the mark in good faith in Australia; or
  • has not used the trade mark in good faith for a continuous period of three years and at least five years have passed since the trade mark was entered on the register.

The trade mark owner will then have an opportunity to show the mark has been used in good faith, this may include evidence that they have:

  • assigned the mark to another party (in which case the assignee must be evidence to have been using the mark in good faith);
  • given another party permission to use the trade mark; or
  • a good explanation as to why the mark has not been in use for three years.

If the evidence is convincing, the court or registrar will likely refuse the application for non-use, however, if the evidence is not convincing or the trade mark owner has not sufficiently demonstrated the use of the mark was in ‘good faith’, the mark will be removed from the register.

If you are considering registering for a trade mark, however have identified that a similar or identical mark is already registered, it is worth while considering whether the earlier mark can be removed due to non-use.

Alternative oppositions: Extensions of time exceeding three months and amendments to trade mark applications

Some holders may seek to oppose the registration of your mark after the opposition period has expired. If you receive notice that an extension of time request has been filed in relation to your mark, you may oppose this on the grounds that:

  1. sufficient time has already been allowed
  2. a party would be adversely affected if the extension was granted
  3. the reasons given for the extension of time are not sufficient.

Alternatively, you may oppose a request for an amendment of a trade mark application on the grounds that you believe it will adversely affect you. This could be the amendment of a class in which the mark is protected in that may infringe your trade mark, or some other amendment that would constitute confusion or infringement should it be accepted by IP Australia.

For either of these oppositions, you must file a Notice of Intention to Oppose and pay the requisite fee within one month of the request for the extension or the request for amendment being advertised in the Australian Official Journal of Trade Marks.

IP Australia will then consider whether the grounds are sufficient to reject the parties request for extension or amendment, and will advise the parties on any next steps required to be taken.

If you have questions about Trademark Infringement or believe you may have grounds for an opposition to protect your trademark, please don’t hesitate to contact our experienced lawyers at Butlers Business Lawyers on (02) 4929 7002 or fill out an enquiry form on our website.