Introduction
Once you have applied for a trademark, there are a number of things to consider in order to maintain your intellectual property (IP) rights. For example, it is your responsibility to use your trademark to avoid any opposition applications from third parties. If you don’t actively use your trademark in the course of trade, your trademark can be removed from the register based on the grounds of non-use. In this article, we’ll outline the process of opposing and defending the removal of a trademark. It is important to note that opposition proceedings can be a difficult process. It may be best to contact a trademark lawyer for further assistance.
What does the law say?
Part 9 of the Trade Marks Act 1995 (Cth) provides for the removal of a trademark from the register for non-use. Removal applications are usually based on the following claims where the registered owner:
- has not used the trademark
- has not used the trademark in good faith
- did not have any intention to use the trademark.
Any third party may apply for the removal of a trademark due to its non-use. You can make an application for non-use five years after the filing date of the registered trademark. The application must demonstrate that the registered owner has not used the trademark in the past three years.
Filing an opposition
Oppositions to the removal of a trademark require the filing a notice of intention to oppose and a statement of grounds and particulars. The owner of the trademark usually initiates this process.
Notice of intention to oppose
IP Australia notifies the registered trademark once an application for removal has been made. If you want to oppose the application, you must file a notice of intention to oppose within two months of the non-use application being advertised in the Australian Official Journal of Trademarks.
Statement of grounds and particulars
You must file a statement of grounds and particulars within one month of filing the notice of intention to oppose. The form should include the material facts for supporting the grounds of opposition. This includes whether the registered owner has used the mark.
An application for an extension of time to file an intention to oppose or a statement of grounds and particulars can be lodged in the following circumstances:
- There has been an error or omission by the potential opponent or their agent
- IP Australia has made an error or omission
- There are circumstances beyond the control of the potential opponent.
Notice of intention to defend
If you wish to defend your application for a trademark removal, you must file a notice of intention to defend. This notice must be filed within one month of the removal applicant being given a copy of the statement of grounds and particulars. You may also request an extension to file the notice.
The next step in the opposition process is the submission of evidence. The decision maker (hearing officer) considers this evidence when determining the outcome of the removal application.
Cooling period
Both parties can agree to a cooling-off period to temporarily suspend the opposition process and request for negotiations to take place. This period can be organised after the statement of grounds and particulars have been filed but before:
- IP Australia have made a decision on the opposition; or
- the opposition has been dismissed.
Parties can also agree to extend the length of a cooling period for a further six months. Either party can also request the cooling period to be discontinued early. When this occurs, the cooling-off period resumes and restarts from the relevant stage of the proceedings. If you have filed a notice of opposition before 15 April 2013, you can’t apply for a cooling-off period in opposition proceedings.
Conclusion
As discussed, any third party can apply for an application to remove a trademark on the grounds for non-use. As a the registered owner, you must ensure that you’re actively using your trademark in the course of trade to avoid any oppositions. If you’re considering opposing an action, it is best to seek legal advice before filing an application.
