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Kerry Newcomb expert trademark attorney.

So, you have secured acceptance of your Australian trade mark – great! But now you have received a Notice of Intention to Oppose or a Statement of Grounds and Particulars – where to from here?

One must keep in mind is that with opposition or potential opposition matters, time is of the essence.  That is there are important strict deadlines that must be adhered to throughout the opposition process. The first important deadline is that within one month of receiving a Statement of Grounds and Particulars you must file a Notice of Intention to Defend. Failure to do so, will result in the lapsing of your application.

Once again all is not lost if your application is opposed, there may be avenues around this such as, possibly negotiating with the Opponent a mutually acceptable co-existence, if appropriate. This is often done by approaching the Opponent either, directly or via their attorney on record.  In my experience, there is often room to negotiate a mutually acceptable arrangement to avoid opposition proceedings, which is always preferably to spending time and money on Attorneys!

Even if a settlement is not a possibility, you may be able to defend the opposition. Once you have filed a Notice of Intention to Defend, the evidentiary stage commences.  That is the Opponent has three months to file Evidence in Support of its opposition.  You then have three months to file your Evidence in Answer.  The Opponent then can file Evidence in Reply within two months.

All evidence filed in trade mark oppositions must be filed in a Declaration via the Objective connect platform.
Once the evidentiary stage is completed either party can request a hearing on the matter.

Of course, if you would like help with an opposition in respect of your acceptance trade mark, please contact me.