A guide to trademark oppositions in Australia

17 October, 2022

What is a trademark opposition in Australia?

A trademark opposition in Australia is a process by which a third party objects to the registration of a trade mark in Australia.

What are the reasons for opposing a trade mark in Australia?

The common reason to oppose a trademark is you don’t want a person to obtain a registered trademark.

How to file an opposition to the registration of a trade mark in Australia?

Step 1: filing a Notice of intention to oppose.

Time requirement: within two months of the trademark you wish to oppose being advertised as accepted in the Australian Official Journal of Trade Marks.

Note that:

– Before: We must download, complete and upload the form to fill a Notice of intention to oppose.
– Now: We can file it through our online services platform.

Step 2: filing a statement of grounds and particulars within one month of filing the notice of intention to oppose

What are the grounds for a trademark opposition in Australia?

Your opposition must be based on at least one of the grounds set out in the Trade Marks Act 1995 (Cth). 

Below are numerous grounds of opposition, including:

• The trademark is not capable of distinguishing the trademark applicant’s goods and/or services from those of other traders;
• The trademark is similar to an earlier trademark which acquired a reputation in Australia;
• The trademark applicant does not intend to use the trade mark;
• The trademark is substantially identical with and/or deceptively similar to an earlier trademark.
•  The application was filed in bad faith
• The use of the opposed mark would be contrary to law

What to do if your trademark is being opposed?

If you wish to defend the opposition, you must file a Notice of intention to defend with IP Australia.

Time requirement: 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.

Note that: 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.

If you would like to commence a trademark opposition or need assistance overcoming an opposition in Australia, New Zealand or internationally, feel free to contact us.

If you would like to know how much you have to pay to register a trademark in Australia, you can read this article.