Opposition to Registration of a Trade Mark

Trade mark opposition is commonly referred to an opposition to an application for registration of a trade mark which is a means of challenging an accepted trade mark application. Any interest third person can file an opposition to trade mark application within 2 months from the date of its publication on Australian Official Journal of Trade Marks. An opposition to registration of a trade mark must be filed based on one or more of the grounds of opposition as provided in sections 57 to 62A of the Trade Marks Act 1995.

Grounds of opposition to registration

The grounds of trade mark opposition include the following:

  • Registration may be opposed on the same grounds as for rejection (section 57)
  • Applicant not owner of trade mark (section 58)
  • Opponent’s earlier use of similar trade mark (section 58A)
  • Applicant not intending to use trade mark (section 59)
  • Trade mark similar to trade mark that has acquired a reputation in Australia (section 60)
  • Trade mark containing or consisting of a false geographical indication (section 61)
  • The application, or a document filed in support of the application, was amended contrary to this Act or the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars (section 62)
  • Application made in bad faith (section 62A)

Procedure of opposition to registration of a trade mark

Trade Mark Opposition Procedure diagram

(Click on the image to zoom)

Notice of Intention to Oppose

A notice of intention to oppose must be filed within two months from the date of an application being accepted and published. A statement of grounds and particulars must be submitted within one month after a notice is filed.

Notice of Intention to Defend

The Applicant of the Application to be opposed will be forwarded the notice of intention to oppose and statement of grounds and particulars and allowed one month from the date of notification to file a notice of intention to defend. It is the owner’s onus to defend its trade mark application. If a notice of intention to defend is not filed, the application will lapse and the opposition will be discontinued.

Evidence Stage

When the owner files a notice of intention to defend, the opposition enters to evidence stage where both parties can submit their evidence and rebut the evidence filed by the other party.

Evidence stage is broken down into three stages:

  1. Evidence in support – filed by the opponent
  2. Evidence in answer – filed by the owner
  3. Evidence in reply – filed by the opponent

Evidence needs to be filed within prescribed time frames.

Hearing and Decision Stage

When the evidence stage ends, either party can request to be heard. A hearing may be attended in person or over the phone or by making written submissions. Hearing officer will issue a written decision after considering the evidence and submissions. Costs may be awarded to the winning party.

Either party may file an appeal against the decision the Federal Court or the Circuit Court within 21 days of the decision date.