How to defend a challenge to your IP
How you can respond to an opposition, objection or dispute of your IP will depend on the type of right.
Defend opposition to your trade mark registration
If someone opposes the registration of your trade mark, we'll let you know and give you a chance to respond.
Oppose removal of your trade mark for non-use
We'll let you know if someone applies to have your trade mark removed for non-use and give you a chance to respond.
To understand the process and the steps involved, view the flow chart below.
To get started, you'll need to:
- Log in to online services
- File your opposition. Submit this request within two months of the removal application being advertised in the Australian Official Journal of Trade Marks
- File your statement of grounds and particulars within one month of submitting your opposition. For example, this could include documenting where you've used the trade mark.
If you don't file a notice of intent to oppose and a statement of grounds and particulars, the trade mark will be removed from the register.
You can submit the forms via our online services or by printing and posting them to us.
Cooling off period
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 or dismissed the opposition.
If both parties agree to a cooling off period, we'll grant it for six months to allow negotiations to take place.
This request can be made via our online services or by printing the application form and posting it to us.
Defend opposition to an amendment of your trade mark
This isn't a common occurrence. If you want to challenge someone's opposition to an amendment of your trade mark, we'd recommend that you seek legal advice. If you decide to defend, we'll let you know the steps in the process directly.
Defend an opposition to granting of your patent
If someone opposes the granting of your patent, we'll let you know and give you a chance to respond.
Respond to a third party request for re-examination of your patent
If someone else requests a re-examination of your patent, the Commissioner will re-examine it and provide a report.
The report will be sent to you, and you'll have the opportunity to:
- Respond with a written submission disagreeing with the report, and/or
- File amendments to overcome the issues raised.
The Commissioner will consider submissions or amendments before making a final decision.
Defend a dispute of your design right
If someone disputes the registration of your design, we'll let you know and give you the chance to respond.
Respond to a third party request for examination of your design
If a third party has requested to have your design examined or re-examined, we'll notify you and invite you to pay half of the examination fee.
You'll have 2 months to pay your half of the fees. If you don't pay in this time, the registration of your design will cease. Any certificate of examination that we have previously issued will also be revoked.
Once your half of the fee is paid, the design will be fast-tracked for examination. This will normally commence within a couple of weeks. After we have conducted the examination:
- If we find grounds to revoke your design, we'll send you and the third party an adverse report detailing the issues. You'll then have 6 months to overcome the grounds or request a hearing. In either case, you will both be given the opportunity to request a hearing in relation to the examiner's decision
- If we don't find grounds for revoking your design, or if all grounds for revocation are overcome in time, we'll let you and the third party know that we intend to certify the design. If you don't overcome the grounds or request a hearing within 6 months of our adverse report, registration will cease. If neither party requests a hearing following our report, we'll certify the design.
Defend an extension of time
If someone opposes your extension of time regarding a trade mark, patent or design right, we'll let you know.
You and the opponent can then:
- Submit evidence to support your case
- Make a written submission or request a hearing to present your case.
If someone opposes a time extension for your plant breeder's right, you can contact the examiner who has been assigned to your case via email at firstname.lastname@example.org.
Defend an ownership dispute
If someone disputes the ownership of your patent or design, you can defend your ownership of the IP right.