Trade Mark Opposition Process
- Dr Lachlan Wilson
- Aug 19, 2023
- 2 min read
A trade mark will undergo examination and then be advertised as accepted for 2 months prior to registration. If an application gains early acceptance, it is generally advertised about 5 months after the filing date. This is due to the international treaties that Australia must allow time for trade marks in other countries.
An opposition may only be lodged during this 2 months advertisement period, otherwise the trade mark will be registered. The initial notice of opposition must be followed in 1 month by the SGP and the owner has a further 1 month in which to file a notice of intention to defend which leads to a 3 month period to file evidence in support of the opposition.> firstly, it is necessary to file a “notice of intention to oppose”, and then follow with a Statement of Grounds and Particulars (SGP).
The SGP must refer to the laws and the facts upon which the opposition is based. The Opposition will only proceed if both steps are taken, otherwise the opposition will fail. These documents must be sent to both the trade mark office and the Australian address of the trademark owner. IP Australia will also provide a copy of the documents to the trade mark owner. The SGP must be adequately detailed otherwise the trade mark office may dismiss the opposition or seek further details.
Defence: The owner must then indicate whether they intend to defend their trade mark, if they don’t then the opposition will succeed. If the owner does file a notice of their intention to defend their trade mark then the opponent must prepare and lodge evidence to support the opposition. There are further steps of evidence leading to a hearing and a decision.
Grounds:
There are many reasons (grounds) for wanting to lodge an opposition to the registration of a trade mark. In each case, the facts and circumstances forming the basis for the reasons must be given. It is not sufficient to simply list the grounds of opposition, additionally, the facts must be set out for each of the grounds. The SGP must set out the facts upon which they are relying as the basis for their opposition.
