There is provision within the Act for any person to file opposition proceedings to the registration of the mark, although they will generally be filed by a person whose interests are in some way affected by the appearance of the trade mark on the Register.
The person opposing the registration is given an opportunity to make out certain grounds available under the Act to persuade the Registrar that the trade mark shouldn’t be registered. Competing claims to ownership of a trade mark usually arise in this process, and the owner of the trade mark will be in a better position than the Examiner to establish these grounds.
To register their opposition the person must file a notice of their opposition in the approved format with the appropriate fee. This must be done within the prescribed period, generally three months from the advertisement of acceptance. S52 or having gained an extension of time under S224.
A copy of the Notice of Opposition will need to be served on the Applicant, S52, within three months from the date of advertisement in the Official Journal of Trade Marks, with provisions for an extension of time, (r5.2). Where the trade mark opposed is an International Trade Mark there is no need for the person opposing the trade mark to serve a copy of the Notice of Opposition upon the owner, in which case the Registrar will inform the International Bureau of the opposition.
Where a national trade mark was accepted for registration post October 2006 this broadens the grounds available for the person opposing the trade mark, who can rely upon S58A (opponent’s earlier use of a similar trade mark) and S62A (application made in bad faith), two new sections, in addition to the amendments in S60(similar to an trade mark with reputation before the priority date) and S61. (trade mark consists of or contains false geographical origin)
Opposition to international trade marks accepted between 23 October 2006 and 19 December 2006 can rely upon the S58A, S60, S61 but not the S60A ground. Opponents to international registrations accepted Post 19 December 2006 will have the S60A ground at their disposal.
A copy of the evidence upon which the mark is opposed must be served and filed upon the Applicant and with IP Australia within three months of the date of the Notice of Opposition, r5.7. The Applicant is given three months to file their response and evidence in answer upon the Applicant and file same with IP Australia. r5.9. There is further provision for the filing of evidence-in-reply to an evidence-in-answerr5.12. Usually the evidence is filed in the form of a Declaration with exhibits annexed in conformance with the Regulations.
A person opposing the registration of a mark may raise any of the initial grounds of rejection available to the Examiner, with the exception of S57. Some of these are that the Applicant isn’t the Proprietor of the mark S58, that there is no good faith intention to use the mark S59, the mark is likely to deceive or cause confusion because it is similar to a mark which has acquired a reputation in Australia S60 (contingent on the date of the registration), that the mark contains a false geographical indication S61 (subject to the date of the acceptance of the registration), or was accepted on the basis of false evidence. S62. The scope of opposition is limited to these grounds provided for in the Trade Marks Act and Regulations. The person opposing the registration also has all of the grounds available to them which could have been used by the Examiner to reject the application at the examination stage. The evidentiary burden rests with the opponent seeking to establish the grounds to the satisfaction of the Registrar.
The Registrar must give the opportunity for both parties to be heard S54 except when dealing with an international registration where the owner has failed to provide an address for service.
At the conclusion of the hearing must either register the mark subject to any condition or limitation or refuse to do so. S55. The Registrar has some flexibility in terms of making an appropriate decision. For instance, the Registrar may find the trade mark applied for is deceptively similar to a previous trade mark but it’s use is only likely to cause confusion in respect of some of the goods/services nominated in the application. It is open to the Registrar to still allow registration subject to the conflicting goods/services being removed.
A right of appeal against the Registrar’s decision lies to the Federal Court of Australia either at the initiative of the applicant or opponent S56.
A person can also oppose an amendment by the Applicant to an Application, or the Applicant can oppose an extension to the three month period for filing an objection to the registration. Opposition proceedings extend to an Applicant contesting an application to remove of a trademark for non-use.
Once the timetable for the filing of evidence has concluded, either party can request a formal hearing, which will be before a delegate of the Registrar, who will set a date giving the parties ten days notice of the hearing. Where the parties don’t request a hearing the Registrar can appoint a date or decide the matter based on the material filed. The parties can also request a hearing on the written record.
It is always possible for the parties to settle the matter prior to the hearing and there is provision for the application to be withdrawn or discontinued by the Applicant for registration or the person who has filed a notice of opposition under S214. A person opposing a registraton can be asked to give security for costs. Costs has the meaning given in the Federal Court Rules including Solicitors fees, Counsel’s fees, Court fees and witness fees. Awards of costs are limited to amounts specified in Schedule 8 of the Regulations.
As a general proposition costs usually follow the event and are awarded to a successful party and the Registrar has the discretion to give consideration to the conduct of the parties in the award of costs. Parties will generally be invited to make submissions as to costs at the hearing.
Procedures at the hearing are governed by r21.15. There is provision for attendance in person, by telephone or videoconference by permission of the Registrar. Proceedings are conducted with the a degree of informality and Registrars aren’t bound by the rules of evidence applying to traditional courts.
The parties usually would be expected to prepare a written outline of evidence which they would present to the Hearing Officer to assist them in making their verbal submissions. Parties can represent themselves in opposition proceedings, and may be assisted by the Trademarks Manual of Practice and Procedure on the IP Australia website. Generally the Registrar will reserve their decision to consider the written submissions and material, and send a copy of the decision including any award of costs to the parties.
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