Infringements and Oppositions

Protecting your trade mark

While many trade mark matters don’t involve disputes, there are times when you need to fight to protect your trade mark. You may need to prosecute other parties when they infringe on your trade mark, or you may need to defend your trade mark from other parties who challenge it.

As your IP partner, MacMillan will work with you to protect the integrity of your rights and trade mark.


Trade mark infringement

Your trade mark registration means you alone have the sole right to use or license your trade mark as you see fit. Unfortunately, trade mark infringement is becoming all too common.

Infringement of a registered trade mark occurs where another party, without the consent of the owner, uses a trade mark that’s the same or similar to a registered trade mark for the same or similar goods or services.

What can you do about trade mark infringement?

If you believe someone is infringing on your trade mark, MacMillan Trade Marks can act to resolve the matter for you wherever they are in the world. In many instances we are able to resolve the dispute before court proceedings are required, providing a simpler and cheaper alternative to you.

In any infringement matter, time is of the essence – we recommend taking swift action.

Let us help enforce your trade mark

Trade mark opposition

A trade mark opposition is heard before the Australian Trade Mark Office, where one party believes there is a conflict or dispute over the rights to a trade mark. A notice to oppose a trade mark must be filed within a specific time from advertisement of the trade mark application.

Prosecuting a trade mark opposition

Whether you want to oppose a registered trade mark, or someone is filing a notice to oppose against you, MacMillan Trade Marks can help. We have years of experience in dealing with trade mark opposition proceedings quickly and efficiently to ensure costs are kept to a minimum.

Australia has a streamlined trade mark opposition process, meaning time is of utmost importance in any opposition matter.

The key steps include:

  • File Notice of Intention to Oppose
  • File Statement of Grounds
  • The other side files Notice to Contest
  • Evidence is filed in 3 stages:
    – Evidence in Support
    – Evidence in Answer
    – Evidence in Reply
  • Written submissions or an oral hearing
  • Decision is made
Contact us for help