Trade Mark Oppositions
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 competency of this firm.
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.
How can Actuate IP assist?
Our trade mark lawyers and trade mark attorneys have extensive experience in trade mark oppositions, representing both local and international clients and associates.
Our team has extensive experience in the trade mark opposition process and is capable of achieving results tailored to you and your business needs.