International oppositions (IRDA)
An International Registration Designating Australia (IRDA) can be opposed on any of the grounds referred to in regulation 17A.34 of the Trade Marks Regulations 1995.
The opponent must satisfy us that at least 1 of the grounds in the notice has been established.
For information about opposing registration of a trade mark see Opposing a Trade Mark Accepted for Registration.
Filing an opposition
From 15 April 2013, oppositions to IRDAs 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 IRDA, 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:
- 3 months of the IRDA 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 IRDA 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 IRDA may become protected in Australia.
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 IRDA holder)
If the IRDA holder wishes to defend the IRDA against the opposition, they must file a notice of intention to defend with us.
The notice of intention to defend must be filed within 1 month of the International Bureau being notified that a statement of grounds and particulars has been filed. You must file an Australian address for service with the notice of intention to defend.
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 opposition will be successful and the IRDA may not be protected in Australia.
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
