Part VI of the Trade Marks Act (Chapter 385) is the public check on the registry. It is the only stage at which a third party can stop a mark before it goes on the Register.
Section 40(1) — “a person”
A person may, within three months after the date of advertisement of the acceptance of an application — or within such further period as the Registrar, on application made to him within that first period, allows — give notice to the Registrar in the prescribed manner of opposition to the registration.
Note the breadth: a person, not a “person aggrieved”. There is no standing requirement to oppose, in contrast to section 14 and section 13, which require a person aggrieved. Section 39 defines the three terms used in the Part: “applicant”, “notice of opposition” and “opponent”.
An extension is available, but only on an application made within the original three months. Section 94’s general power to extend time “either before or after its expiration” is expressed to apply unless otherwise expressly provided — and section 40(1) does otherwise provide.
Which is why watching the advertisements matters. Once the period closes, the mark proceeds to registration under section 44, and the only routes left are rectification under section 13 or removal for non-use under section 14 — both harder, both requiring you to be a person aggrieved, and section 14 requiring three years to pass.
What to oppose on
The Act does not list opposition grounds separately. Any lawful ground of objection to the application will do — in practice:
| Ground | Provision |
|---|---|
| The mark is substantially identical with or deceptively similar to an earlier registered or applied-for mark for the same goods or goods of the same description | s 24 |
| Use would be likely to deceive or cause confusion — including with an unregistered reputation | s 19(a) |
| Use would be contrary to law, or the mark is scandalous, or not entitled to protection in a court of justice | s 19(b), (c), (d) |
| The mark is not distinctive and not capable of becoming distinctive | ss 15–17 |
| The applicant is not the proprietor | ss 25, 32(1) |
| The mark contains a national or official symbol, or a name requiring consent | ss 20, 21 |
| The application covers more than one class, or is otherwise non-compliant | ss 22, 32(3), 33(1)(a) |
In determining the opposition the Registrar may take into account a ground of objection whether relied on by the opponent or not. Section 41(2) gives the Court the same power on a referral. So a ground you overlooked is not necessarily lost — but no opponent should rely on that. Plead every ground you have.
Sections 40(2) to (5) — the steps
- Notice of opposition, in the prescribed manner, to the Registrar within the period (s 40(1)).
- Service on the applicant of a copy, on or before the date the notice is given to the Registrar (s 40(2)). Not after — the section is specific.
- Counter statement by the applicant in support of the application, lodged with the Registrar in the prescribed manner within three months after service (s 40(3)), with a copy served on the opponent on or before the date of lodgement (s 40(4)).
- Evidence. The Registrar may require the opponent or the applicant to appear before him and give evidence or further explanation (s 40(5)), and under section 5(1) may summon witnesses, receive evidence on oath and require the production of documents or articles.
- Decision (s 40(6)).
Failure to appear in obedience to a summons, or to produce a document, or a refusal to be sworn or to answer, may be certified by the Registrar to the Court, which may order compliance or punish the person as if guilty of contempt of court.
Section 40(6) — the outcome
after the expiration of three months from the date the notice of opposition was given — or such further period, not exceeding three months, as he allows on the application of either party — determine the opposition and decide:
(a) to register the mark without conditions or limitations; or
(b) to register it subject to such conditions or limitations as he thinks fit; or
(c) to refuse to register it.
Paragraph (b) is the one most often overlooked. An opposition need not be all or nothing: the realistic outcome is frequently a registration cut down — a narrowed specification, a disclaimer of a common element, a colour or geographic limitation, or an honest concurrent use arrangement under section 26. An opponent should say expressly what limitation would answer its objection.
A person aggrieved by the decision may appeal to the National Court (s 40(8)), and under section 44(2) registration follows only after the period allowed for appeal has expired.
Costs, security and referral to the Court
- Costs. Under section 5(1)(d) the Registrar may award costs against a party; under section 88 they may be recovered as a debt in a court of competent jurisdiction in default of payment.
- Security for costs. Under section 42, if an opponent does not reside in or carry on business in the country the Court may order security within a specified time — and if the order is not complied with, the opposition shall lapse. Section 101 makes similar provision on appeals.
- Referral. Under section 41(1) the Registrar may, and on the application of both parties shall, refer the matter to the Court.
- Withdrawal. Under section 43 an opposition may be withdrawn at any time before it is determined by the Registrar or the Court — the usual vehicle for a negotiated settlement.
Keeping watch
Opposition only works if you know an application has been advertised. Practical steps: monitor the prescribed advertisements; search the Register periodically under section 8, which is open to any person on payment of the fee, remembering that pending applications also count under section 24; and act on market intelligence — a competitor’s new packaging is often the first sign.
If the deadline has passed, the fallbacks are rectification, non-use removal, and — if you have your own reputation — passing off. All are slower and more expensive than a timely opposition.
Sources
- Trade Marks Act (Chapter 385) — ss 5, 8, 13, 14, 19–26, 32, 33, 37, 39–44, 87, 88, 94, 101
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.