The Pitfalls Of Handling Your Own Trade Mark Opposition Matter
A trade mark opposition is when someone lodges an official objection to a trade mark being registered, usually because they believe they will be adversely impacted by the registration of that particular trade mark.
It is possible to handle all trade mark opposition matters yourself, but it is really important to understand that an opposition is a formal process which is time critical, and often relies on a solid knowledge of the Trade Marks Act 1995 and relevant case law. This article discusses the various aspects of trade mark opposition and highlights the risks involved if you decide to go the DIY route. Bearing in mind that the opponent is the party that bears the onus of proving their case, it is perhaps even more challenging to “DIY” this process as an opponent.
Let’s first take a look at the basics of trade mark opposition.
What is a trade mark opposition?
All trade mark oppositions are handled by IP Australia, the Australian Government agency which governs the rights and legislation for trade marks and other intellectual property (IP).
Once a party has applied to register a trade mark, presuming the trade mark is accepted by IP Australia, the details are published in the Australian Official Journal of Trade Marks for a mandatory period of two months. This publication will occur at around five months post filing in a straightforward case, and, the two months is known as the ‘opposition period’. Most opposition notices are filed during this period. Technically, it is possible to seek an extension of time and file an opposition to a trade mark after that two month period, but, extensions are not guaranteed to be granted.
Although there are numerous grounds on which an opposition can be filed, an opposition is generally filed when a person/company believes that a trade mark that is being advertised is identical or confusingly similar to their own earlier filed pending or registered mark, or to a trade mark they have perhaps used without registration for a period of time in the marketplace. Other grounds can include a party believes that the trade mark applicant is not the true owner of the mark, that the trade mark being sought is likely to mislead or deceive and that the applicant filed the application in bad faith.
There are also various other situations when a party can file an opposition. These include when:
- an application is made to amend a trade mark
- a party seeks an extension of time in certain circumstances
- an application is made to remove a trade mark on the basis of non-use
Whether you are defending an opposition or mounting a challenge against another party’s trade mark registration, you will need to follow the strict timelines and processes set out by IP Australia.
For more information on this issue, have a read of our informative blog: ‘A comprehensive guide to trade mark oppositions.’
Responding to a notice of opposition
Let’s say you’ve applied to IP Australia to register your trade mark and it’s now in the two-month period when the acceptance of your application is advertised. There are essentially two steps an opponent must take to form a notice of opposition. Firstly, they must file a notice of their intention to oppose (the NIO) your trade mark within the two month period (unless they are successful in obtaining an extension of time. Once the NIO is filed the opponent has one month to file a statement of grounds and particulars (the SGP). You will be informed once the NIO is filed, and, again will be provided a copy of the SGP after it’s filed and processed and deemed adequate by IP Australia. The SGP will provide some initial information as to the grounds of the opposition, and, provide some brief reasons the Opponent believes those grounds apply.
What now?
Firstly, you need to decide whether or not you wish to contest the matter. This may depend on whether you believe the opponent has any valid grounds for opposition, and perhaps more importantly, whether the opponent can actually substantiate those grounds with evidence. If you choose to defend the opposition matter, you have one month (from the date IP Australia provides you a copy of the SGP) in which to file a formal notice of your intention to defend with IP Australia. Thereafter, the parties have strict timelines in which to assemble evidence, documentation etc which support their respective positions.
As an opponent, to succeed, you must establish at least one of the grounds of your opposition, as captured in your original SGP. If the opponent’s evidence in support of their opposition is in improper format, or insufficient to make out its case, an applicant could get an easy win. Hence, it is often harder for an opponent to DIY an opposition proceeding than an applicant. However, if the opponent provides its evidence properly, the applicant may need to present clear evidence presented in the right format that addresses each point raised in the objection, being careful not to open any doors for the opponent to file evidence in reply that the opponent neglected to provide earlier in the process.
For more information on this topic, have a look at this article on our blog entitled ‘What Should I Do If I Find A Similar Trade Mark to My Own?’
Opposing a trade mark – in greater detail
If you believe that a pending trade mark should not be allowed to register (for example, because it is confusingly similar to your own registered or pending mark (assuming it is for the same or similar classes of goods or services covered by your trade mark registration) or perhaps the applicant has acted in bad faith in the filing of the application), then you can file a Notice of Intention to Oppose.
Once that notice has been filed, you have one month in which to file your Statement of Grounds and Particulars. In this, you will need to detail the sections of the Trade Marks Act 1995 relevant (noting that from 1 October 2024 IP Australia introduced new fees that apply for the 4th and each further ‘ground’ you select) along with reasons why you believe those grounds apply and that the proposed trade mark should not be registered.
The next steps in the process follow strict time periods for:
a) the applicant to lodge their notice of intention to defend the opposition,
b) for you as the opponent to submit evidence to support your objection
c) for the applicant to file their evidence in answer
d) for the opponent to file evidence in reply
Whether you’re defending or opposing the registration of a mark, you can request a hearing (which can be by way of filing legal arguments/submissions in support of your case, or by way of an oral hearing that occurs via video conference before a hearing officer) before IP Australia makes its decision. Alternatively, the parties can pay to have a decision issue based purely on the properly filed evidence. Parties then have 21 days in which to appeal IP Australia’s decision. A notice of appeal to a decision of this kind is filed in the Federal Court.
The risks of a DIY opposition
As you can see, a trade mark opposition matter involves a number of steps which have to be completed within stipulated timeframes. The time-critical nature of the process and the level of detail and accuracy required present inherent risks for someone who is not familiar with the trade mark legislative landscape.
We have experienced a number of occasions where a client has approached MMW Trademark Services for help partway through handling their own opposition matter. This is generally because they have encountered problems with their DIY submissions and need expert advice before they can proceed. Sometimes, mistakes made in this process cannot be undone or fixed. This can have a huge impact on the ultimate decision. It could, for example, result in loss of a trade mark application that could have been successfully defended or an unsuccessful opposition that could have otherwise been successful.
For example, a client who had filed their own opposition contacted us recently because IP Australia had informed them that their ‘Statement of Grounds and Particulars’ that they had submitted was inadequate. The agency then gave the client time to remedy the issue.
Unfortunately, the client had omitted to complete an entire ground of opposition in their original SGP. A ground that we think could be the strongest. This sort of omission can make it very difficult – if not impossible – to fix retrospectively. We were lucky in this example that the client had filed their SGP early, which gave us time to withdraw the ‘incorrect’ version and file again, including the necessary grounds and information by the deadline (which, as a reminder is strictly one month from the date the initial notice of intention to oppose is filed). If not for that stroke of luck, It is likely that this error could have significantly affected the client’s chances of successfully opposing the registration of a brand that is very similar to theirs.
Another example which highlights the pitfalls of self-representation occurred recently when our office was contacted to assist a client in applying to have a registered trade mark removed. The alleged grounds for removal were that the trade mark was not being used for the claimed goods.
The trade mark owner (and, therefore the opponent to the removal application) represented themselves throughout the proceedings – but lost. As the opponent it was up to them to prove their case. On reflection, it’s possible they could have done so but the inexperience and lack of understanding of these proceedings, at least in part, let to their loss of their registered trade mark. Not only did our client therefore succeed in their removal application, but, as the successful party has also been entitled to having costs awarded against the party that was unsuccessful.
Why a DIY approach to trade mark matters is risky – in a nutshell
For the reasons detailed above, there are clear risks in taking a DIY approach in an opposition (or other trade mark) proceeding. There are a number of pitfalls and risks along the way that can undermine their chance of success.
These include:
- Non-negotiable and tight timelines
- Presenting insufficient or inadequate evidence
- Making mistakes on submissions and evidence formats
- Not understanding the nuances of trade mark law
It’s really important to know that opposition proceedings are a formal process which can have significant financial implications. For example, the party that is unsuccessful, may have costs awarded against them. Costs are determined by a set schedule to the Trade Marks Act 1995 so may not mean payment of full costs to the ‘winner’, but as of 1 October 2024 this schedule of costs increased significantly such that an unsuccessful party may be required to pay a hefty amount to the successful side. Having to pay thousands of dollars to the ‘winner’ in circumstances where, had the ‘losing side’ had proper assistance, the outcome could be very different, is a tough pill to swallow.
It’s also really important to know that IP Australia won’t notify you if someone files an application for a trade mark that is similar to yours. If your trade mark is presented as an obstacle during initial examination then you might be notified in certain circumstances when that other party’s application is accepted and published. Typically, it’s up to you as a trade mark owner to monitor for any new trade mark applications that may be of concern. Unless this is done properly and action taken timeously, your brand may be vulnerable.
A strategic approach backed by solid, well-prepared evidence is essential in order for someone to successfully mount or defend a trade mark opposition.
A last word on DIY oppositions
With any opposition – whether you’re challenging a third party’s trade mark application or defending yours – time is of the essence. Any missed deadline or incorrect or incomplete action could result in the opposition being dismissed, or, as discussed above, a finding in the other side’s favour and award of costs against yours. Successful challenges and defences also require a deep understanding of the nuances of trade mark legislation which makes self-representation even riskier.
It’s always preferable to have your valuable IP asset under the watchful eye of an experienced trade marks professional – and whether you need the landscape monitored for any potential threats to your brand, whether you require support overcoming an opposition or whether you want to file a trade mark opposition – MMW Trademark Services can help.
Note that a new fee structure for oppositions came into effect in October 2024. You can read more about IP Australia’s Fee & Costs Award Review here.
For expert advice or guidance on any opposition matter, you’re welcome to contact our team of approachable and highly skilled trade marks attorneys. Get in touch through our website or phone us on 03 8288 1432 – we’re here to help!
