Trademark Opposition

What is trademark opposition?

A trademark opposition is an objection or challenge to a trademark application to prevent registration. Usually an opposition is filed by someone who believes that your trademark should not be registered because it conflicts with their own trademark rights.

For example, the energy drink company, Monster Energy recently (unsuccessfully) opposed a trademark application for MONSTER STRIKE in relation to computer and video programs. Although both marks contained the word “MONSTER”, it was held that there was no conflict because video games are not similar to energy drinks so consumers were unlikely to be confused. 

Trademark opposition process

Once a trademark application has been examined and approved by the Trademark Office, it is advertised for a period of three months, known as the opposition period. During this time, any third party may file a notice of opposition. The good news is that oppositions are rare - they are filed in relation to less than 2% of trademark applications.

A trademark opposition could cause considerable delay in the trademark registration process or, at worst, even prevent a trademark from being registered. However most oppositions are settled between the parties as a result of negotiations before they proceed to a hearing.  

When an opponent files an opposition it may be a full opposition, in which the opponent objects to all the goods and services covered by the application or it may be a partial opposition - for only some of the goods and services covered.

In the event of an opposition, the onus is on the applicant to prove that the trademark is registrable. When is a trademark not registrable? – read this to check whether your trademark is likely to be registrable.

Settling oppositions

The Trademark Office encourages all potential opponents to first contact the applicant privately to try to resolve the matter amicably before filing a formal trademark opposition as there are costs for formal proceedings. The three-month opposition period is intended to provide sufficient time for such discussions to be conducted. If necessary, it is possible to apply for an extension of this time, before filing a formal opposition. 

Settlement discussions are often successful -  an opponent may be quite happy to withdraw an opposition if you can agree not to use your trademark in their particular industry, or that you will amend the goods and services covered by your trademark.

Step-by-step breakdown

Once an opponent decides to file a trademark opposition, the process is as follows:

1. The opposition is filed and the grounds for the opposition are stated.

2. The applicant has two months in which to respond and file a counter-statement. If there is no response the trademark application is considered abandoned.

3. Within two months, the opponent must file evidence in support of their position.

4. Within two months the application may submit evidence to support their position.

5. Within one month, the opponent may file further evidence in response to the applicant’s evidence.

6. The evidence stage is closed and the parties may inform the Commissioner how they wish to be heard:

• on papers already filed – no hearing fee or

• on written submissions to be filed – hearing fee or

• by attendance at a hearing – hearing fee

After the hearing, the Assistant Commissioner will issue a written decision within 30 days and the parties may file an appeal within 20 days of the decision.

As mentioned, trademark oppositions are rare and even if your trademark is opposed, there’s often an opportunity to negotiate a settlement with the opponent before having to file evidence or attend a hearing. 

To minimise the chances of receiving either an Trademark office trademark objection or a trademark opposition, you should conduct a thorough trademark search before you submit your application. Here are 5 ways to do this: How to Conduct a Trademark Search