Intellectual Property Law - Trade Mark Opposition
Date: August 23, 2010
Authors: LAC Lawyers
Author: Allan Woodley
Trade mark opposition proceedings are an essential part of any trade mark protection strategy, to maintain the distinctiveness, integrity and value of your brand, as well as protecting the right to commence or continue trading under your trade mark, by preventing others from registering identical or deceptively similar marks. International traders need to be vigilant and alert to the acceptance of applications for identical or deceptively similar marks in Australia and other jurisdictions and be prepared to take timely action to oppose registration. Worldwide trade mark acceptance watching services are one way to keep abreast of such contingencies and are available at a reasonable cost. It is important to have a general understanding of trade mark opposition procedures and principles in order to effectively safeguard your valuable trade mark rights.
Australia’s Trade Marks Act 1995 enables opposition proceedings to be filed against Australian trade mark applications and International Registrations Designating Australia (IRDAs). Comparable systems of opposition exist in most other countries with trade mark registration systems, although procedures and the relevant law vary in different jursidictions. The following comments provide a broad overview of oppositions in Australia. For more detailed comments and advice on this and any other aspect of trade mark law and practice please contact us.
Standing
In Australia, opposition may be filed by anyone – s.51(2) refers to “a person” (meaning any legal entity, including a company). Hence it is generally considered that there is no longer a requirement that the opponent be a “person aggrieved” in order to have the requisite standing to bring opposition proceedings in Australia; meaning that the opponent does not need to have some trade mark, property or interest of its own to protect in the proceedings but may invoke the public interest or the rights of a third party in preventing registration of the opposed mark
Opposition period
Notice of opposition must be filed within 3 months of the date advertisement of acceptance in the Official Trade Marks Journal. Extensions of time in which to file Notice of Opposition are possible on certain limited grounds.
Grounds of opposition
Opposition may be based on any or all of the grounds in Sections 57-62A of the trade Marks Act 1995, and on no other grounds.
- Section 57 – any grounds on which an application may be rejected, except the ground that a mark cannot be represented graphically; hence:
- Section 41 – trade mark not capable of distinguishing applicant’s goods or services.
- Section 42 – (a) trade mark scandalous or (b) contrary to law.
- Section 43 – trade mark the use of which is likely to deceive or cause confusion because of some connotation contained in the mark
- Section 44 (1) and (2) – substantially identical or deceptively similar prior trade mark application or registration in respect of similar goods, similar services or closely related goods or services; except where there has been honest concurrent use (Section 44(3)) or evidence of prior use (Section 44(4)).
- Section 58 – applicant is not the owner of the trade mark.
- Section 58A – where the opposed application was accepted on the basis of evidence of use under Section 44(4), prior and continuous use of a similar mark by the opponent in relation to similar goods and services.
- Section 59 – applicant is not intending to use the trade mark.
- Section 60 – another trade mark had acquired a reputation in Australia amongst a significant section of the public, such that use of the applicant’s mark would be likely to deceive or cause confusion.
- Section 61(1) – trade mark containing or consisting of a false geographical indication, in relation to similar goods or where use of the opposed mark would be likely to deceive or cause confusion.
- Section 62 – the application, or a document filed in support of the application, was amended contrary to this Act.
- Section 62A – the application was made in bad faith.
Evidence and hearing
Evidence is generally filed by way of Declaration. The opponent may serve and file evidence in support of the opposition; the applicant may serve and file evidence-in-reply; and the opponent may serve and file evidence in response to the applicant’s evidence-in-reply. Further evidence may be filed with leave. Once all evidence has been filed and served the matter may be listed for hearing. Hearing before a delegate of the Trade Marks Registrar is more informal than Court proceedings. Strict rules of evidence do not apply. The hearing may even be conducted by telephone; and either party may file written submissions in lieu of attendance at the hearing. Such options allow costs to be kept within reasonable limits.
Relevant date
The relevant date for determination of the respective rights raised in the opposition is generally as of the priority date of the opposed application.
Onus
The Opponent bears the onus of making a clear case against registration of the opposed mark, so as to overcome the presumption of registrability of a mark that applies in Australia.
Costs
The Registrar may award costs against the unsuccessful party, but may exercise a discretion to vary the award as appropriate. Security for costs may be ordered against an opponent that neither resides nor carries on business in Australia.
Appeal
Appeal from a decision of the Registrar in opposition proceedings lies to the Federal Court.
LAC Lawyers are able to act in relation to trade mark opposition proceedings, and any appeal therefrom, in Australia and worldwide. To discuss any aspect of trade mark oppositions please do not hesitate to contact the writer.
Intellectual Property Law - Copyright and Moral Rights - Infringement and Consent
Date: December 20, 2010
Author(s): LAC Lawyers
Read this article to find out what constitutes Copyright infringement of Moral Rights in Australia and how parties can grant consent for the use of their work.
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Author(s): LAC Lawyers
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Date: December 08, 2010
Author(s): LAC Lawyers
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Date: August 23, 2010
Author(s): LAC Lawyers
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Date: May 17, 2010
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Date: May 17, 2010
Author(s): Michael Pickering B.A., LL.B. (Hons.), LL.M., M. A.
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Date: August 28, 2009
Author(s): LAC Lawyers
The principle behind the tort of “passing off” is that a person cannot represent their goods or services as those of another. The action for passing off protects business goodwill and reputation from wrongful appropriation.
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Date: May 20, 2009
Author(s): LAC Lawyers
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IP Law - Intellectual Property - Trademarks
Date: April 22, 2009
Author(s): LAC Lawyers
The term “Trade Mark” is defined in the Trade Marks Act as “...a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person."
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Date: June 05, 2008
Author(s): LAC Lawyers
All businesses, irrespective of their size, should have a plan in place for protecting their intellectual property. Trademarks are an invaluable business asset and unfortunately many small businesses overlook the significance of trademarks and the importance of registration.
Intellectual Property - Trade Marks and Parallel Imports
Date: May 04, 2008
Author(s): LAC Lawyers
In certain circumstances where the distributor of a product in Australia is the same as the owner of trade mark overseas a person may purchase the products overseas and distribute the products in Australia. However, the same may not apply where the products are distributed by another third party in Australia.
Intellectual Property - Trademarks and Passing Off
Date: October 10, 2007
Author(s): LAC Lawyers
Under the common law, a person who builds up a reputation in connection with the use of a particular mark will have rights to prevent another person "passing off" goods or services as being those of the owner of the mark if such conduct is likely to injure the proprietor's reputation. The proprietor of a common law trade mark may also be able to prevent registration of a similar trade mark by another party.
IP Law in Singapore - Trademarks
Date: July 10, 2007
Author(s): LAC Lawyers
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