Introduction

Oppositions are proceedings regarding the validity of a trade mark that take place in the intellectual property office of the relevant country.  In Australia, oppositions are conducted at IP Australia.  Opposition proceedings are much less formal than court proceedings.

The most frequent trade mark oppositions are where a party seeks:

  • To prevent a trade mark application that has been accepted from gaining registered rights; or
  • To remove an existing registered trade mark on the basis of non-use

Oppositions are concerned with the registration of trade marks, and are not concerned with damages or injunctions to use.  Those are dealt with by courts (disputes).

The timeframe of oppositions depends on whether or not they proceed to the end or are settled or withdrawn earlier.  A typical opposition that runs its entire course will take 9 – 18 months.

Stages of opposition proceedings

The stages of the opposition are outlined below.

1. Notice of Opposition.

Filed by the Opponent.  Timeframe: 2 months.

Notice of Intention to Oppose: must be filed within the two month opposition period.

Statement of Grounds and Particulars: filed with Notice of Opposition or within 1 month of it.  Sets out basic facts that the opponent relies on to support the opposition.

2. Notice of Intention to Defend

Filed by the Applicant (of the trade mark).   Timeframe: 1 month.

Filed within one month of lodgement of the Statement of Grounds and Particulars. If it is not filed, the Opposed trade mark lapses. If filed, the evidence phase begins.

3. Evidence

Usually filed by both Opponent and Applicant.  Timeframe: 3 – 9 months.

The evidence is crucial in most cases.  The first evidence is the Evidence in Support.  After that is filed, the other party will then be given time to provide its Evidence in Answer (if any), with a final Evidence-in-reply to that evidence allowed.

Evidence must be filed in the form of a statutory declaration (witness statement), and often includes things such as details of how the trade mark is used, labels, signage, photographs of products, invoices, copies of advertisements and the like.

4. Extensions and Cooling Off Period?

Extensions of time to serve evidence are now fairly difficult to obtain.  However, if both parties are in genuine settlement negotiations, they can jointly seek to enter a “cooling off” period, which can be requested at any time during the opposition, for 6 months to a maximum of 12 months.

5. Decision

Timeframe: 6 – 12 months.  After all the evidence is in, the Opposition may proceed at the election of the parties by either:

  1. A hearing: whereby the parties may attend and make oral submissions, or submit written submissions.
  2. No hearing but only written submissions: the parties only file written submissions. The decision is then based on those submissions, the law and the already filed evidence.
  3. No hearing and no written submissions: you do not file written submissions but other party may. The decision is then based on the law, the already filed evidence, and other party’s written submissions if they did so.

Decisions may be appealed in a court.