Trademark opposition: deadline, process and counter-statement

How opposition proceedings work

Once a notice of opposition is served, the applicant must file a counter-statement within two months, failing which the application is treated as abandoned. The parties then file evidence by affidavit in turn: the opponent's evidence in support, the applicant's evidence in support of the application, and the opponent's evidence in reply. The Registrar hears both sides and decides whether the mark should proceed to registration. Either party can appeal the decision to the High Court. Proceedings can take a long time, and parties often settle through coexistence agreements or amendments to the specification.

Common grounds of opposition

An opponent can rely on absolute grounds under section 9 or relative grounds under section 11 of the Act, along with general objections. The grounds most often raised in practice are these.

• Similarity to an earlier registered or used mark, likely to cause confusion
• Prior use and reputation of the opponent's mark
• The mark is descriptive, generic or lacks distinctiveness
• The application was made in bad faith
• The applicant is not the proprietor of the mark

Why it matters for startups

Monitor the Trade Marks Journal or use a watch service so you can oppose marks similar to yours within the four-month window, which cannot be extended. If your own application is opposed, file the counter-statement on time and gather evidence of your use and reputation, such as invoices, marketing and media coverage. Missing a deadline can cost you the mark.