Trademark Oppositions | What Do They Mean for You?

Author: Riet van den Ende, Progressive Legal

Once registered, your trademark is a powerful tool that plays an important role in protecting your business, building your brand recognition, and establishing market presence. In Australia, the trademark oppositions system provide a means for interested parties to challenge either the registration of a trademark or the application for removal of a registered trade mark.  

As a trade mark owner, you may need to file a trade mark opposition in order to preserve your rights or receive one against your trade mark application or your application for removal of a registered trade mark. In either case, it is essential to know the “ins and outs” of trademark oppositions.  

On this page, we’ll provide a comprehensive guide on trademark oppositions, exploring how the process works and what it means for your brand.   

What are Trademark Oppositions? 

Trademark oppositions are initiated by third parties to formally challenge either: 

• the registration of a trademark that is accepted by IP Australia; or  
• an application for removal of a registered trade mark.  

An opposition against the registration of another trade mark may be filed if someone believes a pending trade mark application will hurt or compromise the integrity of their brand. This type of opposition can be filed with IP Australia after a trademark application has been accepted but before it has been officially registered.  

An opposition against an application for removal of a registered trade mark may be filed if someone believes a registered trade mark has not been used for several years or was filed in bad faith. 

This system  serves as a mechanism for protecting the integrity of the trademark registration process by promoting fair competition and safeguarding the rights of trademark owners. 

How do I proceed with a Trademark Oppositions? 

If you have found a pending trade mark that is strikingly similar to yours and is offering the same or similar goods and services, you should strongly consider filing a trade mark opposition. Pending trade marks can be found in the Australian Official Journal of Trademarks. IP Australia may or may not notify third parties that a trade mark relevant to their own has been accepted for registration, but this should not be relied upon. Best to consider engaging us for our trade mark monitoring service. 

Once a trade mark has been accepted for registration by IP Australia, you only have 2 months to lodge an opposition from the date of that acceptance. In some circumstances, this time frame may be extended if an extension is requested, but don’t count on it.  

Or, if you are already the owner of a pending or registered trade mark and have received a notice from IP Australia that someone applied to remove your trade mark from the Australian Trade Marks Register, you have 2 months to lodge an opposition against this removal action. 

What are the stages of trademark oppositions? 

Notice of Intention to Oppose

If someone decides they would like to oppose a pending trade mark or the removal of a registered trade mark, they will need to file a Notice of Intention to Oppose. A filing fee of $250 will need to be paid to IP Australia to oppose a pending trade mark – there are no official fees to oppose an application for removal of a trade mark. . A copy of the Notice of Intention to Oppose will be sent to the trade mark applicant or removal applicant, alerting them of the annexed deadline below.  

Statement of Grounds and Particulars

Within one month of filing the Notice of Intention to Oppose, the opponent must file a Statement of Grounds and Particulars with IP Australia. The purpose of this is to provide a legal foundation for the opposition that states any reasons why they believe that the opposition should succeed. These reasons are known as grounds, and they must be chosen from a list of available grounds for opposition which can be found in Trade Marks Act 1995 (Cth). This statement may also give you the opportunity to apply for an award of costs, if you are the successful party. 

The opponent must include the relevant grounds they have nominated and provide supporting information for each of them.  

• If more information is required, the opponent will be notified, and they may add to the statement.  
• If there is still inadequate information to satisfy the requirements for a specific ground, then that ground and information will be deleted from the statement.  
• If the opponent does not satisfy any of their proposed grounds, the opposition will be dismissed.  
• If the opponent does satisfy any of their proposed grounds, the opposition will proceed.  

For more information on this stage of the process, check out our article on Statements of Grounds and Particulars.

Cooling Off Period

If both parties mutually consent, a request for a cooling off period can be submitted by the parties. This is used if the parties are involved in negotiations of settling the dispute before proceeding to the more complex and costly stages of the process. The cooling off period is usually 6 months but this may be extended to 12 months if necessary.  

Notice of Intention to Defend

If no cooling off period if requested, the proceedings will continue. After one month of receiving the Statement of Grounds and Particulars, the applicant or removal applicant should file a Notice of Intention to Defend with IP Australia. This is to demonstrate that they would like to defend their trade mark application or application for removal of a trade mark. If they do not file a Notice of Intention to Defend, the opposition will automatically be considered as successful, and the opposed application or challenged trade mark will be removed. 

Evidence in Support

The opponent should file Evidence in Support within three months of receiving the Notice of Intention to Defend. This is used to provide evidence for the grounds in their Statement of Grounds and Particulars. All evidence is filed in the form of statutory declarations. Examples of possible evidence may include past correspondence, business records, photos, and witness statements. 

Evidence in Answer

The applicant or removal applicant should file Evidence in Answer within three months of receiving the Evidence in Support. In cases where the opponent has not filed evidence in support, the applicant or removal applicant should respond to the Statement of Grounds and Particulars. This should be done within three months of being notified that the Evidence in Support was not filed. All evidence must be in the form of statutory declarations. The applicant or removal applicant should directly respond to each ground presented by the opponent and provide as much evidence as possible to support their case.  

Evidence in Reply

The opponent should file Evidence in Reply within two months of receiving the Evidence in Answer. The opponent may only respond to issues raised in the Evidence in Answer. No new issues should be presented.  

Decision time

After all the evidence is filed and exchanged, IP Australia will decide on the final outcome. Either party can request a hearing on the trade mark opposition. Otherwise, the decision will be made on written record.  

If a hearing is requested, these can be held online via conferencing platforms or in very rare circumstances, in person in Canberra. A hearing must be requested within one month after Evidence in Reply has been submitted. There is a $400 fee to request a hearing and any attending party will be required to pay additional hearing fees for each day they appear at the hearing. Both parties are expected to prepare written submissions to aid the Hearing Officer’s decision. The final decision is typically given within three months after the hearing, but this varies depending on individual circumstances.  

Award of Costs

An award of costs is usually issued against the unsuccessful party. An unrepresented party will struggle to obtain an award of costs in the same way as a represented person. Unrepresented parties can only obtain the award of costs if they can prove they paid fees for obtaining advice during the proceeding. Costs are awarded according to the Trade Mark regulations 1995. 

We know this process may seem daunting and complex but our experienced trade mark team know how to navigate you through it. If you need help in relation to the process of trade mark oppositions, make an enquiry below.

What are the Grounds for a Trade Mark Opposition? 

Your opposition must be supported by at least one of the grounds set out in the Trade Marks Act 1995 (Cth). Some of the most common grounds to oppose a pending trade mark application are included in this table below. 

For an opposition against the removal of a trademark, the grounds relied upon consist of the same grounds used by the removal applicant. 

Key Takeaways 

Trade mark oppositions allow interested parties to voice their concerns and prevent potentially conflicting trademarks from being registered or prevent existing trade marks from being removed by others.  

Trade mark oppositions can become immensely complex, and it is important to seek legal advice when dealing with them. If you need help with trade mark oppositions, feel free to contact us at Progressive Legal. We have a skilled team of Trade Mark Lawyers that are happy to help with any questions you may have. All you need to do is make an enquiry below, fill out our contact form on this page or contact our office at 1800 820 083.   

Trademark Oppositions FAQs

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