Protecting your trademark from use by others is very important. Part of your strategy to protect your trade mark should include assessing new trade mark applications made by others and, when necessary, make an application for trade mark opposition to any marks that may be the same or similar to your own mark and are being used for the same or related goods and services.
Trademark Opposition in Australia
The primary reasons for lodging a trademark opposition include:
- The proposed trademark is identical or very similar to your registered or pending trademark application;
- The proposed trademark is likely to create deception or confusion in the market because of the reputation you have developed for your trademark in Australia;
- You have evidence that the trademark applicant is not the true owner of the proposed trademark.
If your mark is not registered, you can still oppose registration of a similar mark. You will need to establish that your trademark was in use in trade before to the lodgement of the proposed mark you intend to oppose. To be successful, you will also need to provide evidence of use and that a reputation has been established for your mark in the services or goods for which it is used.
Continual use of the mark is not necessary. You will need to show the reputation that was established from any prior use of the mark still exists. The longer the period of non use of the mark the less likely that there will be any residual reputation.
Other reasons that may be considered for making a trade mark opposition are:
- The applicant is not intending to use trademark for the goods and services listed in the application;
- The trademark contains or consists of a false geographical indication;
- The trademark application is defective; or
- The application has been made in bad faith.
For premium produce or products that have developed a reputation based on their geographical origins, defence against the false use of geographical indicators is important. Geographical indicators may be the country of origin, or a specific location from where the goods originated.
Trade Mark Opposition Procedures
The first step to oppose an accepted trademark is to file your notice of intention to oppose. When a trademark opposition is made, you must file a Notice of Opposition within two months of the trademark being advertised as accepted in the Australian Official Journal of Trade Marks.
Regular trademark searches will allow you to identify potential infringing trademark applications earlier in the application process. This can be important and provide you to more time to prepare a Notice of Opposition.
It is important to note that if you lodge a trademark opposition, you will be required to establish the basis for at least one ground for the opposition to be successful. You must lodge a statement of grounds and particulars within one month from the day you filed your notice of intention to oppose a trademark application.
Trade Mark Opposition to International Applications
The laws that govern trademark opposition will vary for each country. The key principle to prevent confusion in the market as to the origin of those goods and services represented through use of a trademark is well established in most countries. Therefore, international trademark opposition is primarily focused on opposing the registration of identical or very similar trade marks that exists in the same or related goods and services as a pre-existing registered mark.
The key challenge for anyone seeking to protect their mark internationally is that in some countries the trademark office that regulates trademark applications do not review applications against existing registrations. For example, French and European Community Trademark Offices do not carry out a prior rights search against existing registered marks. In such cases objecting to the registration of a particular mark that is the same or similar to yours is your responsibility. Therefore to secure protection in these countries, regular trademark searches should be completed.
The time lines for making an application for trademark opposition varies for each country. In many countries you are provided a window of 2 or 3 months from date of publication to lodge an application for trademark opposition. Other countries only provide 1 month for such applications.
In the case where an international trademark application has been made under the Madrid Madrid Protocol, the period for making trademark opposition will follow each designated country’s national laws and procedures.
Opposition Claims Based on Prior Use and Reputation
In some countries such as China and Japan, ownership rights to a trademark are provided to those that first file an application for registration and not to those that are first to use a mark in trade. This would mean that the basis for claiming prior use and reputation on unregistered marks can not be used.
Relationship of International Applications to the Initial Trademark Application
For international applications, each designated country has the right to refuse the protection or registration of the international registration in its territory. It is important to note that any international application must be based on the registration of a mark by the Office of origin (basic mark); for example the initial application for registration of a mark in Australia.
There is no possibility of any international application proceeding in respect of any of the designated countries until the basic mark has been registered. If the basic mark fails to be registered then the international application will not proceed.
Conducting Regular Trademark Searches
If you have trademarks that are important to your business, it is important to carry out regular trademark searches to ensure that any infringement is identified. Trademark oppositions can be an important way of protecting your brand both here and in Australia. Talk to us today about Trademark Searches.