Opposition of a Trade mark in Australia

Once IP Australia decides that a trade mark application meets all the legal requirements, registration is not granted immediately. Instead, they “accept” the application and publish it in the Australian Official Journal of Trade Marks. This opens a window for the public, i.e. specifically competitors or other brand owners to formally challenge the eligibility of the application to be granted registration. It allows business owners to protect their own brand equity and prevents the registration of marks that might be deceptive or too similar to existing ones.

Opposition to Registration

The opposition process begins as soon as a trade mark application is “advertised as accepted”. From the date of this advertisement, a strict two-month window opens. This is the only time a third party can officially challenge the registration. If you miss this window, your options become significantly more difficult and expensive, usually requiring you to wait until the mark is registered and then applying for “cancellation” or “rectification” through the courts.

That said, IP Australia doesn’t proactively tell you if a similar mark has been filed. It’s up to brand owners to monitor the journal or set up “watch services”. If a conflicting mark appears, the opponent must act quickly. The opposition is not merely a formal complaint; it’s a formal legal proceeding that moves through several distinct phases, starting with the initial filing of intent and ending with a final decision by a Hearing Officer.

The several stages in an opposition proceeding includes:

Stage 1: Notice of Intention to Oppose

If you decide to challenge a trade mark, the first thing you must file is a Notice of Intention to Oppose. This document serves as a preliminary notification. It is a relatively simple document, but it’s the most time-critical part of the entire process. You have exactly two months from the date of advertisement to get this into the system. It basically tells the Registrar and the applicant that someone is formally opposing the registration.

Filing this notice is a formal requirement, and it usually involves a small fee. While it doesn’t require you to list every single reason why you’re opposing yet, it formally kicks off the legal timeline. If no one files this notice within that two-month window, the trade mark will move forward to registration automatically. Once the notice is filed, IP Australia will notify the applicant, letting them know that their registration process has encountered a formal objection.

Stage 2: Statement of Grounds and Particulars

The Statement of Grounds and Particulars, i.e. SGP, is arguably the most strategically significant document in the entire opposition proceeding, as it establishes the formal legal boundaries of the dispute. Once an opponent has filed their initial notice, they have a strict one-month deadline to submit this detailed statement to IP Australia. It serves two functions, i.e. it identifies the specific sections of the Trade Marks Act 1995 (the “Grounds”) that the opponent believes the application violates, and it provides a summary of the facts and circumstances (the “Particulars”) that support those claims. It is important to be comprehensive at this stage because the opponent is generally restricted to the grounds nominated in this document where adding new grounds later in the process is difficult and often requires the Registrar’s special permission.

When drafting the SGP, opponents must navigate a variety of legal grounds. One of the most common is Section 44, which focuses on trade marks that are substantially identical or deceptively similar to an earlier mark. To succeed on this ground, the opponent must identify specific Australian trade mark numbers that have an earlier priority date than the mark being opposed. If an opponent also wishes to rely on Section 58A, i.e. claiming they have used a similar mark even earlier than the applicant’s priority date, they must explicitly nominate Section 44 as well. Unlike other grounds, Section 58A specifically requires the use of registered or pending marks rather than common law rights.

For brands with established market presence, Section 60 and Section 58 are vital tools. Section 60 allows an opponent to argue that their mark has acquired such a strong reputation in Australia that the use of the new mark would cause confusion among consumers. Section 58, on the other hand, challenges the applicant’s ownership of the mark, asserting that the opponent (or another party) was the first to use it in Australia. Both of these sections are flexible in that they allow for the use of “common law” marks, i.e. those that are not formally registered, as long as the opponent provides representations of the mark or descriptions of its use in the SGP.

Beyond similarity and reputation, the SGP can address the inherent nature of the trade mark itself. Under Section 41, an opponent can argue the mark is not “capable of distinguishing” the applicant’s goods or services. This typically occurs when a mark is purely descriptive, such as using the word “SOAP” for soap products or refers to a geographical location like “SYDNEY” for car services, which other traders should be free to use in the ordinary course of business. Similarly, Section 43 covers marks likely to deceive or cause confusion due to some connotation within the mark itself, i.e. for example, a mark containing the words “non-dairy” for a product that actually contains goat’s milk. Other specific grounds include Section 42, which prohibits scandalous marks or those contrary to law (such as copyright infringement), and Section 62A, which targets applications made in bad faith.

Filing the SGP is a formal process that requires the opponent to provide mandatory personal details and an address for service in Australia or New Zealand. While there is no fee for opposing the removal of a mark for non-use, a fee of $250 typically applies if the opponent nominates more than three grounds or relies on more than ten trade marks under Section 44. Once filed, the Registrar assesses the adequacy of the statement. If it is found to be “inadequate”, the opponent may be directed to provide more information or, in some cases, the opposition may be dismissed entirely. If deemed adequate, IP Australia will serve the document on the applicant, officially shifting the burden to them to defend their application.

Stage 3: Notice of Intention to Defend

Once the opponent has filed a compliant Statement of Grounds and Particulars, the burden of action shifts to the applicant. IP Australia will send a copy of the SGP to the applicant, who then has one month to file a Notice of Intention to Defend. This is a critical moment for the trade mark owner.

If the applicant fails to file this notice within the one-month deadline, the application will “lapse”. This means the trade mark application effectively ends right there, and the opposition is successful by default. This mechanism was introduced to prevent inactive applications from causing administrative delays, i.e. if an applicant isn’t willing to stand up for their brand, the law assumes they’ve abandoned it. However, if the applicant does file the notice, the opposition moves into its most intensive phase, i.e. the evidence cycle.

Stage 4: Evidence in Support

As both parties have formally entered the proceedings, the “Evidence in Support” phase begins. The opponent, as the initiating party, is the first to present their proof. They have three months from the time they are notified that the applicant intends to defend the mark. This evidence must be filed in the form of a statutory declaration, which is a legal document signed in front of an authorized witness.

In this phase, the opponent needs to move beyond mere claims and show actual proof. If they claimed their brand has a massive reputation, they should provide data on advertising spend, sales figures, and press clippings. They might include screenshots of their website, photos of their products in stores, or even witness statements from industry experts. The goal is to prove to the Registrar that the grounds listed in the SGP are valid. If the opponent chooses not to file any evidence at all, they can still proceed to a hearing based on the law alone, but it makes their case much harder to win.

Stage 5: Evidence in Answer

After the opponent’s evidence has been served, the applicant gets their chance to respond. This is called “Evidence in Answer”, and the applicant also has a three-month window to prepare and file it. This is where the applicant tries to find flaws in the opponent’s case or provide their own proof as to why their mark should be registered.

The applicant might provide evidence showing that the two marks have actually co-existed in the market for years without any actual confusion occurring. They might argue that the words in the mark are so common in the industry that the opponent doesn’t have a “monopoly” over them. Just like the previous stage, this must be in the form of a statutory declaration. It’s the applicant’s opportunity to present their counter-arguments and explain why the opponent’s fears are unfounded.

Stage 6: Evidence in Reply

The final stage of the evidence cycle is the “Evidence in Reply”. The opponent is given two months to respond specifically to the evidence that the applicant just filed. This is not an opportunity for the opponent to start a new argument or bring in entirely new topics that they forgot to mention earlier. It is strictly for “replying” to the points raised in the Evidence in Answer.

This functions as a formal rebuttal. If the applicant claimed that their sales are tiny and therefore couldn’t possibly cause confusion, the opponent might use the Evidence in Reply to show that the applicant is actually running a massive social media campaign that targets the same customers. Once this stage is finished, the evidence record is officially closed. No more documents can be added without special permission from the Registrar, which is rarely granted.

Stage 7: The Hearing

Upon completion of the evidentiary filings, the matter moves toward a resolution. The parties are asked if they would like to have the case decided at a hearing. There are two ways this can happen, i.e. an oral hearing or a decision on the written record.

In an oral hearing, both parties (usually represented by trade mark attorneys) present their arguments to a Hearing Officer, who is a senior official at IP Australia. These hearings used to happen in person in Canberra, but today they are frequently held via video or telephone. It’s a formal setting where the lawyers highlight the strongest parts of their evidence and argue how the law should be applied. Alternatively, if the parties want to save costs, they can choose to have the Hearing Officer make a decision based purely on the written evidence and submissions already filed, without anyone needing to speak.

Stage 8: Decision and Outcome

After the hearing or the review of the written record, the Hearing Officer will take some time, i.e. usually several weeks or months, to draft a written decision. This document is often quite detailed, running through the evidence of both sides, analyzing the relevant sections of the Trade Marks Act, and ultimately deciding whether the trade mark should be registered.

There are three main outcomes. First, the opposition could be dismissed entirely, meaning the trade mark proceeds to registration. Second, the opposition could be successful, meaning the trade mark application is refused. Third, there could be a “split” decision. For example, if a trade mark application covers “clothing, footwear, and jewelry”, the Hearing Officer might decide that the mark can be registered for “jewelry” but must be removed from “clothing” because it’s too similar to the opponent’s brand. The decision will also usually include an “award of costs”.

Appeals and Settlements

A decision from IP Australia is not necessarily the final administrative step. If either party is unhappy with the outcome, they have the right to appeal to the Federal Court or the Federal Circuit Court. This must be done within 21 days of the decision. An appeal is a “de novo” hearing, meaning the court looks at the whole case fresh, and parties can even introduce new evidence that wasn’t seen by IP Australia. Because court is significantly more expensive than an IP Australia hearing, many cases settle before they reach this stage.

In fact, many oppositions never even make it to hearing. Throughout the entire process, the parties are encouraged to talk. IP Australia even offers a “cooling-off period” of up to 12 months if both parties agree they want to try and settle. This pauses all legal deadlines. Often, the parties will reach a commercial agreement, perhaps the applicant agrees to only sell their products in a certain state, or they agree to change the font of their logo. In these cases, the opposition is withdrawn, and both parties may resume normal commercial operations without the potential for prolonged litigation.

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