Trademark Oppositions

6 December 2011

Img: Trademark OppositionsIn this article, we give an introduction to trademark oppositions by answering the following FAQs:

a. What is a trademark opposition?

A trademark opposition is a proceeding in which a third party can oppose the registration of any application under the Trade Marks Act 1995 (including an application to register a trademark).

For example, once a trademark is accepted for registration by IP Australia, this fact is advertised in the official Journal of Trade Marks before it is actually registered. Other parties are then given an opportunity to “oppose” the registration of the trademark.

In many ways, an opposition proceeding is like a “mini-trial” that is conducted by IP Australia. Parties file evidence and make legal submissions about whether the trademark should or should not be registered. A small number of oppositions are decided after an oral┬áhearing, although most are determined without one (i.e. most are based solely on written submissions).

b. Who can oppose a trademark application?

Any person, company, incorporated association, or group of persons can file an opposition to a trademark application. The person bringing the opposition (who is known as the “opponent”) does not need to be the owner of a similar mark, and does not need to have any sort of legal or commercial interest in the outcome of the opposition in order to file the opposition.

c. On what grounds can a trademark application be opposed?

The registration of a trade mark can be opposed on numerous grounds, including -

  • that the trademark is not distinctive;
  • that the trademark is substantially identical or deceptively similar to another registered trademark;
  • that the applicant does not in fact own the trademark;
  • that the use of the mark would be likely to cause confusion or deception because of the reputation in another mark.

d. What is the process for trademark oppositions?

Although not all opposition proceedings follow the same path, the following steps are common to many oppositions:

i. Notice of opposition

Oppositions are commenced with the filing of a “notice of opposition” with IP Australia. Notices of opposition must usually be filed within three months from the day on which the acceptance of the application has been advertised. In certain very limited circumstances, this time limit can be extended.

It is usually necessary to serve a copy of the notice of opposition on the applicant, although this requirement does not apply in the case of certain international trademarks.

ii. Evidence in support

After lodging the notice of opposition, the opponent has three months to serve a copy of any “evidence in support” of the opposition on the applicant. The original evidence must then be filed with IP Australia as soon as possible, along with details as to how the evidence in support was served on the applicant.

“Evidence in support” is usually given in the form of one or more statutory declarations from witnesses which attempt to prove the facts upon which the opposition is being brought.

iii. Evidence in answer

The applicant then has three months in which to respond. This could involve either:

  • serving the opponent with a copy of a notice stating that no “evidence in support” will be relied upon; or
  • serving a copy of the “evidence in answer” on the opponent.

In any event, the applicant must file the original notice or original “evidence in answer” with IP Australia.

“Evidence in answer” is any evidence upon which the applicant would like to rely to support the registration, and is usually given in the form of statutory declarations. The evidence in answer does not need to be restricted to the matters raised in the evidence in support.

iv. Evidence in reply

The opponent then has a further three months in which to respond by either:

  • serving the applicant with a copy of a notice stating that no “evidence in reply” will be relied upon; or
  • serving a copy of the “evidence in reply” on the applicant.

The evidence in reply must normally be confined to responding to the facts alleged in the evidence in answer.

v. Determining the matter

After the closure of the “evidentiary” stage, the matter must be decided by the Registrar of Trade Marks or a Delegate of the Registrar. IP Australia will normally set a deadline for each of the parties to request a hearing, or to provide written legal submissions relating to their case. Unless very special circumstances exist, no new evidence can be introduced from this point onwards.

If neither party requests a hearing the decision is normally made on the “written record” (i.e. by considering the written evidence and submissions on the IP Australia file). Most trademark oppositions are decided on the written record.

A hearing provides an opportunity for the parties to make their case in person, and to call witnesses etc. Hearings can be heard in Canberra at any time during the year, or in a number of sessions which are scheduled in each of the State capital cities at least once a year. If the hearing is held in Canberra, the parties can attend by telephone or video conference. Usually, the parties will be represented at the hearing by a trade mark attorney, solicitor or barrister.

The determination involves a decision to (i) reject the application, (ii) accept the application subject to conditions or limitations, or (iii) accept the application without any limitations. There is normally a delay between hearing or closing of submissions and the handing down of the decision.

vi. Appealing

A party who is unhappy with the decision has the right to lodge an appeal with the Federal Court of Australia. The appeal must be lodged within 21 days of the decision.

e. What costs are involved in trademark oppositions?

There are a number of costs associated with oppositions to the registration of trademarks. Official IP Australia fees are payable in relation to a variety of different events. For example there are fees for:

  • filing a notice of opposition (currently $250);
  • obtaining extensions of time for various deadlines (currently up to $150 per month or part month);
  • requesting the right to be heard at a Hearing (currently $500);
  • attending hearings that last for longer than one day (currently $500 per day, although such hearings are rare).

Trademark oppositions are extremely technical, and it is highly recommended that you have the assistance of a trademark professional such as an IP lawyer or trademark attorney. If you engage a lawyer or trade mark attorney, there will also be fees associated with tasks such as:

  • the preparation of statutory declarations
  • the filing and service of documents
  • the preparation of written submissions
  • any attendances at hearings

Finally, the unsuccessful party may be liable to pay a portion of the successful party’s legal costs in certain circumstances (see below).

f. Can I recover any of my costs from the other party if I’m successful?

Yes. “Costs” are normally awarded against the unsuccessful party.

They are awarded up to the limit of the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, and as such usually cover only a portion of what the successful party is actually charged by their legal advisers (the official scale being lower than the market rate charged by IP professionals). According to IP Australia, in May 2010 the average award of costs is currently between $2,000 and $3,000 but if a hearing is conducted, these typically rise up to $5,000.

Legal costs of the successful party are not always awarded. For example, they are not usually awarded if an opposition is resolved prior to being decided by IP Australia. Further, they are only awarded if the successful party has actually engaged and paid a third party (including IP Australia or a lawyer). Parties who represent themselves cannot recover the costs associated with the time spent on the opposition.

g. How long do trademark oppositions take?

Trademark oppositions are legal proceedings, and take time to resolve. Extensions of time can be granted for the preparation of evidence, and it is common for the Evidentiary Stage to take a year or more.

While this can be frustrating for parties, it can at least have the effect of spreading out the costs that are normally associated with the process.

Do you need help with a trademark opposition?

Magnum IP Legal Services is a boutique intellectual property law firm which works almost exclusively on the basis of fixed fee quotations. Please contact us if you need to oppose or defend the registration of a trademark.