How to respond to an opposition

During the process of registering your trade mark, others are allowed to oppose the decision. If this happens, we'll let you know and give you a chance to respond.  

What is an opposition?

Once a decision has been made to accept your trade mark application, anyone can disagree with the decision and make a formal objection. This is called an opposition.

This usually happens during the two months' notice period, during which your application details are published in the Australian Official Journal of Trade Marks before it's officially registered.

Common reasons for opposition

The most common reasons are when someone believes:

  • The trade mark is identical or very similar to another registered or pending trade mark
  • An international registration has received or is seeking protection in Australia
  • Deception or confusion is likely because of the reputation of another Australian trade mark
  • The trade mark applicant is not the true owner of the trade mark.

What else can be opposed?

In addition to trade marks, others can also oppose other proposals, including applications to:

  • Amend a trade mark application
  • Allow a time extension of more than three months
  • Remove a trade mark from the register because it hasn't been used.

Types of oppositions

What happens if someone opposes my application?

If someone believes that your application has an impact on their trade mark, they can oppose your application by filing a Notice of Opposition and a Statement of Grounds and Particulars with us. They need to do this within the notice period.

They'll also provide documents, circumstances or general knowledge, and potentially evidence, to support their argument.

We'll share a copy of the notice, including any evidence or documents supporting their argument. You'll need to decide if you want to defend against it. If you decide not to, your application will lapse.

How do I defend myself against the opposition?

If you decide to defend against the opposition:

  1. You'll need to submit a Notice of Intention to Defend within one month of receiving the Notice of Opposition
  2. After filing your notice, you need to assemble your evidence, documentation and arguments, challenging the claims that your trade mark is invalid
  3. We'll share the evidence with the other party. You'll both be provided the opportunity to either drop the opposition, or progress it to a hearing with us
  4. You'll be asked to make a submission to argue your case during either a written or oral hearing
  5. The hearing officer will evaluate all evidence and submissions before making a decision.

If the opposition is successful, your trade mark application will be rejected. If the opposition isn't successful, your trade mark will be registered.

Seek professional advice

If your patent application is opposed, we recommend seeking legal advice on how to proceed.

Engaging a trade mark attorney