Someone Has Opposed Your Trade Mark or You Need to Oppose Theirs
Receiving a notice of opposition to your trade mark application can be alarming, especially if you've already started building a brand around it. Equally, discovering that someone else has applied to register a mark that's confusingly similar to yours requires a swift, strategic response.
Trade mark disputes at IP Australia follow a structured opposition process with strict deadlines. Whether you're defending your application against an opposition or filing one yourself, the outcome depends on the strength of your evidence and how well you navigate the process. Getting it wrong can mean losing your mark, being forced to rebrand or giving a competitor a permanent advantage.
When You Need to Act
You've received a notice of intention to oppose your trade mark application.
A competitor has applied to register a mark that's confusingly similar to yours.
You've received a cease and desist letter alleging trade mark infringement.
Your trade mark application has been rejected by IP Australia and you want to challenge the decision.
Someone is using a mark that's identical or deceptively similar to your registered trade mark.
You're launching a new brand and want to protect it before a competitor does.
The Trade Mark Opposition Process
The opposition framework
Trade mark oppositions in Australia are governed by the Trade Marks Act 1995 (Cth). The process is administered by IP Australia's Trade Marks Office and follows a structured sequence of filings, evidence rounds and a hearing.
Filing a notice of intention to oppose
An opponent must file a notice of intention to oppose within two months of the trade mark application being advertised in the Australian Official Journal of Trade Marks. This is a strict deadline. If you miss it, you lose the right to oppose through this process.
Statement of grounds and particulars
After filing the notice, the opponent must file a statement of grounds and particulars setting out the basis for the opposition. This document frames the dispute and determines which issues will be considered at the hearing.
Evidence rounds
The opposition proceeds through three evidence rounds: evidence in support (filed by the opponent), evidence in answer (filed by the applicant) and evidence in reply (filed by the opponent in response). Each round has prescribed deadlines.
The hearing
Once evidence rounds are complete, the matter proceeds to a hearing before the Trade Marks Office. Parties can elect written submissions, an oral hearing or a combination of both. The hearing officer then issues a written decision.
Grounds of opposition
Common grounds include: s 42 (mark not capable of distinguishing the applicant's goods or services), s 43 (scandalous or contrary to law), s 44 (deceptively similar to an existing mark), s 58 (applicant not the owner), s 59 (no intention to use the mark), s 60 (prior use by the opponent) and s 62A (application made in bad faith).
Appeal to the Federal Court
A party dissatisfied with a Trade Marks Office decision can appeal to the Federal Court of Australia. The appeal is a rehearing of the matter, meaning the court considers the evidence afresh rather than simply reviewing the original decision for error.
How to Respond to a Trade Mark Opposition: Step by Step
If your application has been opposed, the process below sets out what happens, in what order and the deadline attached to each step. The timeframes are fixed by the Trade Marks Regulations 1995 (Cth) and run automatically - the Trade Marks Office will not chase you, and most of these deadlines cannot be recovered once missed.
Diarise every deadline the moment the opposition starts
Immediately
An opposition begins when the opponent files a notice of intention to oppose, which they must do within two months of your application being advertised as accepted in the Australian Official Journal of Trade Marks. From that point, every subsequent step runs on fixed timeframes under the Trade Marks Regulations 1995 (Cth). Calendar each deadline immediately - extensions are hard to obtain (see below) and missed deadlines are usually fatal.
Review the statement of grounds and particulars
Opponent files within 1 month of the notice of intention to oppose
The statement of grounds and particulars (SGP) tells you exactly which grounds the opponent relies on - for example s 44 (deceptive similarity with an earlier mark), s 60 (the opponent's prior reputation), s 58 (ownership) or s 62A (bad faith) - and the facts said to support each ground. Assess each ground on its merits: oppositions often plead every available ground, but the opponent must prove them, and many fall away once tested against the evidence.
File a notice of intention to defend
Within 1 month of being given the SGP
This is the critical step. If you do not file a notice of intention to defend within one month of receiving the SGP, your application lapses and the opposition succeeds by default. Filing the notice is inexpensive and preserves your position, so it should be filed even if you are negotiating or still weighing whether to fight.
Consider negotiation or a cooling-off period
Available at any stage by joint request
The parties can jointly request a cooling-off period of six months (extendable once, to a maximum of twelve) to suspend the opposition while they negotiate. Co-existence agreements, amendments to the goods and services specification or undertakings about how the mark will be used resolve a large share of oppositions without a hearing - usually at a fraction of the cost.
Analyse the opponent's evidence in support
Opponent files within 3 months of the notice of intention to defend
The opponent must file the evidence supporting its grounds, usually by declaration - sales figures, advertising spend, examples of use and reputation evidence. Scrutinise it carefully: does the evidence actually show use of the mark as registered, in Australia, before your priority date, for the relevant goods or services? Gaps in an opponent's evidence are often the strongest part of an applicant's case.
Prepare and file your evidence in answer
Within 3 months of the evidence in support
This is your principal evidentiary opportunity. Depending on the grounds, your evidence may cover how and when you adopted the mark (to answer bad faith), your own use and reputation, the differences between the marks and the goods or services, the trade channels involved and any honest concurrent use. Evidence should be prepared by declaration in admissible form - assertions without exhibits carry little weight with hearing officers.
Review any evidence in reply and request a hearing
Opponent's reply evidence due within 2 months; hearing request follows
The opponent may file evidence in reply limited to matters raised in your evidence in answer. Once the evidence rounds close, either party can request a hearing, or the Registrar can decide the matter on the written record. Hearings can be conducted orally or on written submissions, and the hearing officer issues a written decision, usually with an award of costs against the unsuccessful party on the official scale.
Consider an appeal if you lose
Within 21 days of the decision
A party dissatisfied with the Registrar's decision may appeal to the Federal Court or the Federal Circuit and Family Court within 21 days. The appeal proceeds as a fresh hearing, so new evidence can be filed - but costs increase significantly, so the decision to appeal should be a commercial one informed by the strength of the hearing officer's reasoning.
A note on extensions: since the Raising the Bar reforms, extensions of evidence periods are only granted where the Registrar is satisfied the party acted promptly and diligently but could not complete its evidence in time, or in exceptional circumstances. The practical consequence is that evidence preparation must begin at the start of the opposition, not at the start of your evidence period.
Trade Mark Infringement
What constitutes infringement
Under s 120 of the Trade Marks Act 1995, a person infringes a registered trade mark if they use as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered mark in relation to goods or services for which the mark is registered (or closely related goods or services).
Identical marks vs deceptively similar marks
The Act distinguishes between marks that are substantially identical and those that are deceptively similar. Substantially identical marks are compared side by side. Deceptive similarity is assessed by the impression the marks would make on a person with an imperfect recollection of the earlier mark.
Defences to infringement
Several statutory defences are available, including prior use of the mark before the registered mark's priority date, good faith use of a person's own name or the name of their place of business and use of a geographical indication.
Remedies
If infringement is established, the court may grant an injunction restraining further use and award damages or an account of profits. In cases of flagrant infringement, additional damages may also be available.
Choice of court
Trade mark infringement proceedings can be filed in the Federal Court of Australia or the Federal Circuit and Family Court of Australia. The choice of court depends on factors including the complexity of the matter and the quantum of any damages claim.
How Astris Law Can Help
Astris Law advises businesses on trade mark protection and IP disputes. We work with you to understand your commercial objectives and develop a strategy that balances the strength of your legal position against the cost and time involved in formal proceedings.
Advising on the strength of your position before committing to opposition proceedings
Preparing and filing notices of opposition and statements of grounds
Gathering and presenting evidence for opposition proceedings
Responding to oppositions filed against your application
Sending and responding to cease and desist letters
Representing businesses in trade mark infringement disputes
Strategic advice on whether to negotiate, oppose or litigate
Frequently Asked Questions
How long does a trade mark opposition take?
A trade mark opposition typically takes 12-18 months from filing to decision, depending on the complexity of the matter and whether extensions of time are granted. Matters that settle through negotiation early in the process can resolve much sooner.
Can I still use my mark while the opposition is pending?
Your application does not give you enforceable trade mark rights until registration, so you are using the mark at your own risk during the opposition period. You should also consider whether the opponent holds a registered mark that could support a separate infringement claim against you.
What does a trade mark opposition cost?
Costs vary significantly depending on complexity, but you should expect $5,000-$20,000 or more for a contested opposition through to hearing. Simpler matters that settle early in the process will be at the lower end of that range.
Should I try to negotiate before opposing?
Often, yes. A co-existence agreement or negotiated amendment to the application can be faster and cheaper than a full opposition. However, the right approach depends on the strength of your position and what you are trying to achieve. In some cases, early negotiation can also reveal whether the other party is willing to compromise before you commit to formal proceedings.
What happens if I don't file a notice of intention to defend?
If you are the applicant and you do not file a notice of intention to defend within one month of being given the opponent's statement of grounds and particulars, your trade mark application lapses. This is the single most common way applicants lose oppositions by default. Filing the notice costs nothing and preserves all of your options, so it should be filed even while you are still deciding on strategy or negotiating with the opponent.
Can I get an extension of time to file evidence in an opposition?
Only in limited circumstances. Since the Raising the Bar reforms, the Registrar may only extend an evidence period if satisfied that the party has made all reasonable efforts and acted promptly and diligently but could not complete the evidence in time, or that there are exceptional circumstances. Extensions are no longer granted as a matter of course, so evidence preparation should start as soon as the opposition begins, not when the deadline approaches.
Astris Law is not a registered trade mark attorney. We provide legal advice in relation to trade mark disputes, oppositions and enforcement as a commercial law firm. For trade mark filing and prosecution services, we can refer you to a registered trade mark attorney.
Strict deadlines apply to trade mark oppositions. Act early.
Don't wait until your options narrow.
If you're facing a trade mark dispute or need to protect your brand, contact Astris Law on (07) 3519 5616 or send an enquiry.