Opposing a removal application
Removal applications are usually based on one of the following claims:
- the owner of the trade mark has not used the trade mark
- the owner of the trade mark has not used the trade mark in good faith
- the owner did not have any intention to use the trade mark.
If the owner wants the trade mark to stay registered, they can contest the claim by opposing the removal application.
Generally, oppositions to removal applications are based on claims that the trade mark has been properly used within the relevant time period.
For information about opposing removal of a protected international trade mark (PITM) see Opposing an application for cessation of protection.
Filing an opposition
From 15 April 2013, oppositions to removal 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 a removal application, 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 removal application being advertised in the Australian Official Journal of Trade Marks - for removal applications advertised before 15 April 2013;
- 2 months of the removal application being advertised in the Australian Official Journal of Trade Marks - for removal applications advertised 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 will be removed from the Register in respect of the goods and or services specified in the removal application.
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 removal applicant)
If you wish to pursue the removal 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 removal 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 trade mark will not be removed from the Register.
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
