How to oppose

How to file an opposition to the registration of a trade mark

Opposition to the registration of a trade mark begins with you filing a notice of intention to oppose. This is followed by your tending of a statement of grounds and particulars.

Importantly, any opposition you file must be made within two months of the trade mark you wish to oppose being advertised as accepted in the Australian Official Journal of Trade Marks.

The first step to oppose an accepted trade mark is filing your notice of intention to oppose and paying the relevant fee.

The second step is that you must file a statement of grounds and particulars within one 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.

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.

This is usually requested to allow mediation to take place.

How to get an extension of time to file a notice of intention to oppose, or a statement of grounds and particulars

The time to file a notice of intention to oppose a registered trade mark 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 paying the relevant fee.

What to do if your trade mark is being opposed

If you wish to defend an opposition to a trade mark, you must file a notice of intention to defend with us.

Your notice must be filed within one month of being given a copy of the statement of grounds and particulars on which your trade mark is being opposed.

There is no fee to file a notice of intention to defend.

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. An extension fee applies.

As the owner it is your responsibility to defend your trade mark or you risk losing it. If the notice of intention to defend is not filed the trade mark application will lapse and the opposition will be discontinued. For international registrations the opposition will be successful and the International Registration Designating Australia (IRDA) may be refused protection in Australia.

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.

The cooling-off period

An opposition may be temporarily suspended if both parties agree to a cooling-off period. It is usually requested to allow negotiations to take place.

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
  • the opposition has been dismissed.

There is no fee to request a cooling-off period.

Only one cooling-off period may be requested in an opposition. The length of a cooling-off period is six months. If both parties agree, a cooling-off period can be extended for a further six months.

Either party may request the cooling-off period to be discontinued early. When the cooling-off period ends the opposition resumes and the relevant stage of the proceedings restarts.

Please note: a cooling-off period is not applicable to opposition proceedings where a notice of opposition was filed before 15 April 2013.

Last updated: 
18 March 2016