Trade Mark Opposition & Removal

TRAD MARK OPPOSITION

All trade mark applications are advertised in the Official Journal of Trade Marks for a 2 month period of opposition after acceptance. Anyone can oppose registration of the trade mark during this period if they believe the trade mark should not be registered under the Trade Marks Act 1995 (Cth) (eg. based on the opponent’s prior rights in the same or similar trade mark).

 

If you receive a notice of opposition in relation to your trade mark application you must respond within a prescribed period, otherwise your application will be rejected. The opposition process can be complex requiring specialised legal knowledge and skills on the Trade Marks Act and Regulations. There is a strict timeframe for filing evidence is strict and all evidence must be in the form of a declaration.

 

TRADE MARKS REMOVAL

A registered trade mark can be removed from the Register if the mark has not been used for 3 years or if it has been applied for registration in bad faith. The person applying for removal is often a trade mark applicant whose registration is being hindered by the registered trade mark or a person who is being alleged to infringe the registered trade mark. The removal application may be for full removal of the trade mark or for partial removal. Full removal means the trade mark will no longer be registered. Partial removal means the trade mark will remain registered but for fewer goods and/or services.

 

The trade mark will be removed from the Register unless its removal is opposed by another party (usually by the trade mark owner). The owner of the registered trade mark must rebut the allegation of non-use by providing evidence in support of the opposition, which is not easy as it should be in accordance with the Trade Mark law.

 

Our lawyers have many years of experience in dealing with trade mark opposition and removal proceedings, including negotiated settlements, in a quick and efficient manner including negotiated settlements to ensure costs are kept to a minimum.

 

For more information, call us today on 02 9233 1411 or send us an online enquiry.

Common Questions

How long does registration last?

A trade mark registration lasts for a period of 10 years and can be renewed indefinitely upon payment of renewal fees every 10 years. Be aware that a registered trade mark may be removed from the Register upon request by a third party if the mark has not been used in the course of trade for 3 years.

Can I enforce my rights against a third party?

As the owner of a trade mark, you have a range of legal and enforceable rights that allow you to take action against people or companies that infringe your rights. Generally, such action starts with issuing a letter of demand requesting they cease and desist use of your trade mark or initiate court action immediately.