FOR IP PROFESSIONALS

Opposing an application to cease protection

An application to cease protection for non-use is usually based on one of the following claims:

  • the holder has not used the protected international trade mark in Australia
  • the holder has not used the protected international trade mark in good faith in Australia
  • the holder did not have any intention to use the protected international trade mark in Australia.

If a person wants the international trade mark to stay protected in Australia, they can contest the claim by opposing the application to cease protection.

Generally, oppositions to cease protection are based on claims that the trade mark has been properly used in Australia within the relevant time period.

If you are opposing removal of a trade mark see Opposing a removal application.

Filing an opposition

From 15 April 2013, oppositions to applications to cease protection 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 application to cease protection, you must file a notice of intention to oppose and the relevant fee with us.

The notice of intention to oppose must be filed within:

You should file an address for service in Australia with the notice of intention to oppose, or soon after.

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 protection of the international trade mark will cease in Australia for the goods and or services specified in the application for cessation.

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 cessation of protection applicant)

If you wish to pursue the 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 the applicant 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 international trade mark will continue to be protected in Australia.  

If a notice of opposition was filed before 15 April 2013, a notice of intention to defend is not applicable.

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.

More information

Last Updated: 24/4/2013

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