An opposition is a formal objection to an action such as the registering of a trade mark.
There are many reasons why a party will oppose an action. For example:
- they may consider a trade mark application which has been accepted is too similar to theirs
- they may own a registered trade mark and another party is attempting to remove their trade mark.
Any interested third party is able to file a Notice of Intention to Oppose. However, oppositions can be complex and costly. If you are considering opposing an action, you may want to seek help from an IP professional before filing an opposition with us.
We do not enforce rights or monitor the market to identify potential infringement. If you wish to take infringement action, this is undertaken via the courts.
Things that can be opposed
- An application to register or protect a trade mark that has been advertised as accepted.
- An application to remove a trade mark from the register because it has not been used.
- An application for an extension of time of more than three months (under section 224 of the Trade Marks Act 1995).
- An application for an amendment to a trade mark application (under section 65A of the Trade Marks Act 1995).
Most common reasons for opposition
The trade mark is identical or very similar to another registered or pending trade mark or an international registration that is seeking, or has gained protection, in Australia.
Deception or confusion is likely because of the reputation of another trade mark in Australia.
- The trade mark applicant is not the true owner of the trade mark.
When filing a notice (called a Notice of Intention to Oppose) you must also submit, within one month, a Statement of Grounds and Particulars which sets out the particular grounds on which you wish to rely during the opposition.
Relevant parts of the legislation
- For opposition to amendments to trade mark applications see section 65A of the Act; Division 2 of Part 6 of the Regulations.
You can only oppose a trade mark once it has been accepted for registration/protection.
National trade marks may be opposed on any of the grounds set out in Division 2 of Part 4 of the Trade Marks Act 1995 (except for section 40) and also on the basis of sections 58 to 62A.
International Registrations Designating Australia (IRDAs) may be opposed on any of the grounds referred to in regulation 17A.34 of the Trade Marks Regulations 1995.