Opposing a trade mark accepted for registration
A trade mark that has been accepted may be opposed on any of the grounds for rejection set out in Division 2 of Part 4 of the Trade Marks Act 1995 (except for section 40) and also on the basis of sections 58 to 62A.
The most common reasons for opposition include:
- the trade mark is identical or very similar to another registered or pending trade mark (section 44) or an international registration that is seeking or has gained protection in Australia (regulation 4.15A)
- deception or confusion is likely because of the reputation of another trade mark in Australia (section 60)
- the trade mark applicant is not the true owner of the trade mark (section 58)
To oppose an action you must satisfy us that at least 1 of the grounds for rejection has been established.
For information about opposing an International Registration Designating Australia (IRDA) see Opposing an IRDA.
Filing an opposition
From 15 April 2013, oppositions to registration are commenced by filing a notice of intention to oppose and a statement of grounds and particulars.
If a notice of opposition was filed before 15 April 2013, the next stage in the opposition proceeding is evidence.
Notice of Intention to Oppose (filed by opponent)
To oppose an accepted trade mark, you must file a notice of intention to oppose and pay the relevant fee.
The notice of intention to oppose must be filed within:
- 3 months of the trade mark being advertised as accepted in the Australian Official Journal of Trade Marks - for trade marks advertised as accepted before 15 April 2013;
- 2 months of the trade mark being advertised as accepted in the Australian Official Journal of Trade Marks - for trade marks advertised as accepted on or after 15 April 2013.
Statement of Grounds and Particulars (filed by opponent)
You must file a statement of grounds and particulars with us within 1 month of filing the notice of intention to oppose.
There is no fee to file a statement of grounds and particulars.
If a statement of grounds and particulars is not filed there will be no opposition and the trade mark may proceed to registration.
If a notice of opposition was filed before 15 April 2013, a statement of grounds and particulars is not applicable.
A cooling-off period may be requested at any time after a statement of grounds and particulars has been filed but before we have made a decision on the opposition, or dismissed the opposition.
Extension of Time to File a Notice of Intention to Oppose or a Statement of Grounds and Particulars
The time in which to file a notice of intention to oppose or a statement of grounds and particulars may be extended if:
- there has been an error or omission by the potential opponent or their agent
- we have made an error or omission
- there are circumstances beyond the control of the potential opponent.
An application for an extension of time can be made by filing the Application for an Extension of Time to File a Notice of Intention to Oppose or a Statement of Grounds and Particulars form and relevant fee with us.
Notice of Intention to Defend (filed by trade mark applicant)
If you wish to defend the opposed trade mark application, you must file a notice of intention to defend with us.
The notice of intention to defend must be filed within 1 month of being given a copy of the statement of grounds and particulars.
An extension of time to file a notice of intention to defend may be requested in certain circumstances, under section 224 of the Trade Marks Act 1995.
There is no fee to file a notice of intention to defend.
If the notice of intention to defend is not filed the trade mark application will lapse.
If a notice of intention to defend is filed, the next step in the opposition process is evidence. A decision on the opposition will not be made until the evidence stages are complete.
If a notice of opposition was filed before 15 April 2013, a notice of intention to defend is not applicable.
More information
Last Updated: 24/4/2013
