An opposition is a formal objection to the registering of a trade mark.
There are many reasons why a party will oppose trade mark registration. For example they may:
- think an accepted trade mark application is too similar to their own
- own a registered trade mark and another party is attempting to remove their trade mark.
Any interested third party is able to file a Notice of Intention to Oppose (Notice). Oppositions can be complex, costly and take a significant amount of time, money and effort. If you are considering opposing an action, you may want to seek help from an IP professional and consider the time, effort and cost required for dispute resolution.
It is your responsibility as a trade mark owner to monitor the market for potential infringement and use the court system to take action. We do not do this for you. If you find yourself needing to fight for your trade mark registration it can be costly in terms of time, money and effort.
Things that can be opposed
- An application to register or protect a trade mark that has been advertised as accepted.
- An application to remove a trade mark from the register because it has not been used.
- An application for an extension of time of more than three months (under section 224 of the Trade Marks Act 1995).
- An application for an amendment to a trade mark application (under section 65A of the Trade Marks Act 1995).
Most common reasons for opposition
The trade mark is identical or very similar to another registered or pending trade mark or an international registration that is seeking, or has gained protection, in Australia.
Deception or confusion is likely because of the reputation of another trade mark in Australia.
- The trade mark applicant is not the true owner of the trade mark.
When filing a Notice you must also submit, within one month, a Statement of Grounds and Particulars which sets out the particular grounds on which you wish to rely during the opposition.
Relevant parts of the legislation
- For opposition to amendments to trade mark applications see section 65A of the Act; Division 2 of Part 6 of the Regulations.
You can only oppose a trade mark once it has been accepted for registration/protection.
National trade marks may be opposed on any of the grounds set out in Division 2 of Part 4 of the Trade Marks Act 1995 (except for section 40) and also on the basis of sections 58 to 62A.
International Registrations Designating Australia (IRDAs) may be opposed on any of the grounds referred to in regulation 17A.34 of the Trade Marks Regulations 1995.