Notice of Opposition

If you apply to register your trademark or file a patent application or design registration, there is a possibility that you may receive a notice of opposition. 

A notice of opposition is when someone challenges your claim to exclusive IP rights. You can also challenge someone else’s claim through filing a notice of opposition. 

When Would A Notice Of Opposition Be Used? 

If  you feel someone is claiming your IP as their own or if you are aware of reasons they should not be granted an exclusive monopoly and you can prove it, you can file a notice of opposition during an opposition period. 

For example, if you are a business using an unregistered trademark and become aware another business is seeking to register it for its own use, you may file a notice of opposition at the trademark office during the period allowed for third party oppositions. 

How Does A Notice Of Opposition Work? 

Depending on the type of IP rights being challenged, the process will generally follow the same five steps. 

  1. You or your IP attorney prepare and file a notice of opposition with the IP office during the advertised opposition period. You must include a statement of  grounds and particulars for opposing their application either with the notice of opposition or shortly thereafter. This is then shared with the applicant so they can understand the reasons for the opposition.
  1. Within one month of receiving the statement of grounds and particulars , the applicant must decide on whether to defend their rights to the IP. If they wish to fight the opposition, they will file a notice of intention to defend the opposition. If they do not respond or object within this timeframe, their application will lapse. 
  1. If the applicant chooses to defend the opposition, both sides must provide evidence to support their position with the onus to prove the opposition being on the opponent  IP. 
  1. If necessary, a hearing can be requested by either party during which both parties' claims can be made by written statements or verbal argument to support their position. 
  1. A decision will be made by the appointed official, typically a senior hearing officer, and handed down. Decisions can be appealed to the court by either party if they do not agree with the decision.

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