The following page is all about how to oppose the removal of a trade mark.
Removal applications are usually based on one of the following claims:
- the owner of the trade mark has not used the trade mark
- the owner of the trade mark has not used the trade mark in good faith
- the owner did not have any intention to use the trade mark.
A removal application that alleges there was no intention to use a trade mark at the time of filing may be made at any time after the trade mark has been filed.
A removal application that alleges a trade mark has not been used for 3 years may be filed after:
- For trade marks filed before 24 February 2019
- 5 years have passed from the filing date of the application for registration
- For trade marks filed on or after 24 February 2019
- 3 years have passed from the date that the particulars of the trade mark were entered into the Register.
If the owner wants the trade mark to stay registered/protected they can contest the claim by opposing the removal application.
Oppositions to removal applications are generally based on claims that the trade mark has been properly used within the relevant time period.
Filing an opposition
Notice of intention to oppose (filed by opponent)
Anyone may oppose removal of a trade mark but it is usually the owner of the trade mark.
If someone applies for removal of your trade mark, we will send you a copy of their application. To oppose a removal application you must file a notice of intention to oppose.
The form must be filed within two months of the removal application being advertised in the Australian Official Journal of Trade Marks.
An address for service in Australia should be provided to ensure you receive important information about the opposition.
Statement of grounds and particulars (filed by opponent)
You must file a statement of grounds and particulars within one month of filing the notice of intention to oppose.
The form only needs to provide brief information indicating whether the trade mark owner has used the trade mark.
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 and the trade mark will be removed from the Register in respect of the goods and/or services specified in the removal application.
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 negotiations to take place.
Extension of time
You may apply for an extension of time to file a notice of intention to oppose or a statement of grounds and particulars. The time can only 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.
Notice of intention to defend (filed by removal applicant)
If you wish to defend the removal application you must file a notice of intention to defend.
The notice of intention to defend must be filed within one month of the removal applicant being given a copy of the statement of grounds and particulars. There is no fee to file a notice of intention to defend.
An extension of time to file a notice to defend may be requested in certain circumstances under the Trade Marks Regulations 1995. An extension fee applies.
If the notice of intention to defend is not filed the trade mark will not be removed from the Register.
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.
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, either by discontinuation or expiry, the opposition resumes and the relevant stage of the proceedings restarts.
For example, if the cooling-off period began during the evidence in support stage, the opponent would have three months from the day the cooling-off period ended to file evidence in support.
A cooling-off period is not applicable to opposition proceedings where a notice of opposition was filed before 15 April 2013.