The Opponent
Identify who filed the opposition and the rights or interests relied upon.
02PUBLICATION
Received a Notice of Opposition?
A third party has opposed registration. Understand the opponent’s case, how the application may be defended and the procedure that follows.
Understanding the Notice of Opposition
A third party has formally objected to registration after the application was accepted for publication. Unlike a Provisional Refusal, this is a contested proceeding between parties.
The Challenged Application
Identify the exact trademark application, its owner and the goods or services challenged.
The Grounds of Opposition
Identify the specific allegations that the applicant is required to answer.
The Response Period
Record the Counter-Statement deadline immediately. Failure to respond may affect the application.
Why Is the Application Opposed?
The defence should be based on the specific grounds, facts and rights relied upon by the opponent.
Earlier Trademark Rights
The opponent may rely on an earlier registered or pending trademark and allege a likelihood of confusion.
Earlier Use or Goodwill
The opponent may claim rights through earlier use and allege that registration would adversely affect those rights.
Bad Faith
The opponent may allege that the application was filed dishonestly or in circumstances that make the filing improper.
Other Grounds
Other statutory grounds may be relied upon depending on the trademark, application and surrounding circumstances.
The Opposition Process
The proceeding moves through six prescribed stages. Each stage has a specific purpose, filing responsibility and applicable deadline.
Notice of Opposition
The opponent states the grounds on which registration is opposed.
Counter-Statement
The applicant answers the allegations and confirms the intention to defend.
Evidence in Support of Opposition
The opponent files evidence supporting its grounds and claimed rights.
Evidence in Support of Application
The applicant files evidence supporting the application and responding to the opponent’s case.
Evidence in Reply of Opposition
The opponent may reply only to matters arising from the applicant’s evidence.
Written Submissions
Both parties present their arguments on the pleadings and evidence before the Registrar decides the opposition.
How Should You Prepare Your Defence?
An effective defence begins with the opponent’s allegations, the commercial history of the application and the evidence available to support the applicant’s position.
Compare the Trademarks
Consider appearance, pronunciation, meaning and overall impression.
Compare the Goods or Services
Consider whether they are identical, similar or commercially related and how they reach the market.
Establish the Facts
Review adoption, first use, continued use and any relevant dealings or relationship between the parties.
Gather Supporting Evidence
Collect dated invoices, catalogues, advertisements, photographs, correspondence and contemporaneous records.
Consider the Commercial Objective
Review the importance and scope of the application and whether a practical resolution should be explored.
Decision and Appeal
After considering the pleadings, evidence and submissions, the Registrar may allow the application to proceed, refuse it, or make another order permitted under the Trade Marks Act.
Review the Decision
Consider the reasons, commercial objectives, scope of protection and practicality of further action.
Consider an Appeal
A dissatisfied party may consider an appeal to the High Court. Appeal periods are short and require prompt review.
SPEAK WITH A CONSULTANT
Need help responding to an opposition?
We can review the notice, applicable deadlines, the opponent’s case and the information needed to prepare your response.
Discuss Your Opposition