Filing an opposition

Opposing an accepted trade mark application

You need to file a notice of opposition [322KB] with us within three months of the application being advertised as accepted in the Australian Official Journal of Trade Marks. The registrar may extend this time provided certain strict conditions are met.

Opposing an application to remove a trade mark for non-use

You need to file a notice of opposition [322KB] with us within three months of the application for non-use removal being advertised in the Australian Official Journal of Trade Marks. The registrar may extend this time provided certain strict conditions are met.

Opposing an extension of time for more than three months or an amendment

You need to file a notice of opposition [322KB] with us within one month of the extension application or amendment application being advertised in the Australian Official Journal of Trade Marks.

In all cases, a copy of the notice of opposition must be served on the other side, as soon as possible, and details of service provided to the Registrar of Trade Marks.

Evidence

If you file a notice of opposition, it will temporarily stop the opposed action from taking place. If the stop is to become permanent, you must make a case providing proof as to why trade mark should be stopped. Once you file a notice of opposition, a timetable for serving evidence starts. There are three main stages.

Evidence in support of the opposition - the opponent must serve a copy of this evidence to the applicant within three months of the date the notice of opposition was filed. All original evidence must be filed with us.
Evidence in answer to the opposition - the applicant must serve a copy of this evidence to the opponent, within three months of the date it was served, with the evidence in support. All original evidence must be filed with us. If there is no evidence in support, the applicant may file evidence in answer to the ground(s) of opposition that have been claimed in the notice of opposition.
Evidence in reply to the evidence in answer - the opponent must serve a copy of this evidence to the applicant within three months of the date it was served with the evidence in answer. All original evidence must be filed with us.

Please note that you cannot bring any extra evidence to the hearing. Once the evidence stage is over, it is only under very special circumstances that either party will be allowed to introduce new evidence.

Form of evidence

All evidence that you provide in respect of your opposition must be in declaratory form. Any attached documents, annexures or exhibits should be clearly identified and referred to in your declaration(s). Trade Marks Regulations 21.6 and 21.7 set out the form that these declarations should take.

Alternatively you may use the standard form [317KB] for such a declaration. The original declaration (and exhibits) must be filed with us and a copy of the declaration (and exhibits) must be sent to the other party. You also need to tell us how, when and where you served the copy of your evidence to the other party.

Extensions of time

The time allowed for serving evidence can be extended if you have good reason for needing extra time. Either party can apply to the registrar for an extension of time (see 5.15 of the Trade Marks Regulations). If good reason is established an extension may be allowed.

Note

A fee applies to all extension requests.
The other party will be told of the request and may object to the extension request.
Disputed extension requests sometimes need to be resolved with a hearing that deals solely with the extension request.
Provision for serving further evidence on the other party is provided for in regulation 5.15.