Evidence in oppositions

In trade marks, an opposition is essentially a formal objection to an action. The most common opposition is where a party opposes the registration of a trade mark. If you receive a notice of opposition or you have filed an opposition, you will have an opportunity to submit what is known as 'evidence'. Evidence typically exemplifies whatever it is that you're trying to demonstrate, such as:

  • evidence that you are the rightful owner of a trade mark
  • evidence that you have been using a trade mark from a certain date
  • evidence that you have been using a trade mark over a continuous period
  • evidence of how you came up with a trade mark
  • evidence which shows that it is unreasonable for the Registrar to allow and action to occur (e.g. extensions of time, the removal of a trade mark).

The type of evidence you provide will typically depend on the grounds under which the opposition has been made. It's this evidence which the decision maker (hearing officer) will consider when determining the outcome of the opposition.

The submission of evidence is subject to strict time frames. It's your responsibility to ensure that all evidence you wish to submit is done within these time frames. The consequence of not filing your evidence in time may be that it is not taken into consideration by the hearing officer when they are making a final decision.

In opposition proceedings there are three main evidence stages:

Stage one: evidence in support - opponent

If you're the person who is opposing an action (the opponent) then it is your responsibility to file evidence which supports your case. Accordingly the opponent is the party who supplies 'evidence in support' of their opposition. Should the opponent wish to file evidence, they must do so within three months of receiving a copy of the notice of intention to defend.

A notice of intention to defend is essentially that. It informs the opponent that the other party (applicant) intends to defend themselves in the opposition.

Please Note: If you're opposing an application to remove a trade mark for non use, you must file evidence in support of your opposition. An application to remove a trade mark for non use is an action whereby a party applies to remove a trade mark registration. If the owner does not oppose this action and file their evidence in support within the three month period or request a hearing, the opposition proceedings are taken to have ended and the trademark must be removed from the register.

Stage two: evidence in answer - applicant  

Once the Applicant has been notified of the evidence in support, they will have three months to submit evidence in answer. This is evidence which can be in response to the evidence in support filed by the ppponent and/or in response to the opposition in general.

In the case of an opposition to registration, if the opponent has not filed any evidence in support, the applicant will be given the opportunity to file evidence in answer to the opponent’s statement of grounds and particulars within three months of being notified that no evidence in support has been filed.

A statement of grounds and particulars is filed with a notice of intention to oppose and basically sets out what the reasons for the opposition are prior to the evidence stages.

Stage three: evidence in reply - opponent

This is the final stage of evidence and it provides the opponent with the opportunity to file evidence which responds to the evidence submitted by the applicant in stage two 'evidence in answer'. Once the opponent has been notified of the evidence in answer, they have two months to provide evidence in reply. If the opponent or applicant does not wish to rely on evidence in any of the stages they should notify us in writing.

Extensions of time to file evidence

The time allowed for filing evidence may be extended if you can show that:

  • you have made all reasonable efforts to comply with relevant filing requirements and despite acting promptly and diligently at all times to meet the deadline you were unable to do so or there were exceptional circumstances to justify the extension
  • either party can apply for an extension of time to file evidence
  • 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.

Filing evidence

All evidence in opposition proceedings must now be filed via an electronic document management system (EDMS) and file sharing website called Objective Connect. Parties will be able to access the evidence through the Objective Connect 'share'.

Form of evidence

All evidence must be in the form of a declaration. Any attached documents, annexures or exhibits should be clearly identified and referred to in the declaration. Trade Marks Regulations 21.6 and 21.7 set out the form declarations should take.

Last updated: 
19 March 2016