Opposition to Non-Use Applications

Trade mark owners in Australia don’t just register their marks and walk away. They also have to protect them from being removed, especially through non-use applications. If someone files to remove your trade mark on the basis that it hasn’t been used for a continuous period of three years, you can oppose that application, but you’ve got to act quickly, correctly, and with a clear strategy.

What is a non-use application?

A non-use application is a formal request made to IP Australia to remove a registered trade mark from the Register on the grounds that it hasn’t been used in the country for at least three consecutive years. These applications are typically filed by businesses looking to clear the way for their own mark or those trying to tidy up the register.

But just because your trade mark hasn’t been used in the past three years doesn’t mean you’re automatically out of luck. If there’s a valid reason for the non-use or if the mark has been used, i.e. even minimally, you may be able to keep it registered by filing an opposition.

Filing a Notice of Intention to Oppose

Once the non-use application is received or published, you’ve got a strict two-month window to act. Within that time, you must file a Notice of Intention to Oppose using an approved form.

This notice is the first part of your formal opposition. If you miss the deadline, and haven’t applied for an extension, your chance to oppose is gone, and the trade mark could be removed without further input from you.

The notice doesn’t need to be complex, but it must be in the proper format. If you’re the holder of a protected international trade mark, you’ll also need to provide an address for service in Australia or New Zealand when filing.

Once filed correctly, the Registrar will send a copy of the notice to the applicant. If the notice isn’t in order, IP Australia will give you a chance to fix it. But if that’s not possible, it’s deemed not filed, and the filing fee is refunded.

Statement of grounds and particulars

Within one month of filing the notice of intention to oppose, you must submit a Statement of Grounds and Particulars. This is where you lay out the factual basis of your opposition.

There’s no fee for filing this document, but it has to be adequately particularized. In other words, it must-

• Identify the relevant trade mark number
• Explain the grounds for your opposition (for example, use during the relevant period, or reasons why use wasn’t possible)
• Be sufficiently detailed to support your position

The Registrar will review your statement for adequacy. If it’s not detailed enough, you’ll be asked to provide more information. If you still don’t meet the standard, your opposition can be dismissed, and you’ll be notified accordingly.

Opponents aren’t required to explain the legal effect of their claims, just the facts themselves. That said, a vague or incomplete statement is the fastest way to get an inadequacy notice. At our firm, we ensure clients submit strong, detailed statements right from the start, avoiding unnecessary delays or dismissals.

Notice of intention to defend

If your statement of grounds and particulars is accepted, the onus shifts to the non-use applicant. They must file a Notice of Intention to Defend within one month of receiving your opposition.

This is a simple form (or even just a letter) confirming that they want to continue with their application. If they fail to file it, the Registrar may treat your opposition as successful and refuse to remove the trade mark from the Register.

So far, so good. But this is just the start.

Extension of time requests

Timeframes in non-use opposition proceedings are tight, but extensions are possible, i.e. within limits.

You can apply to extend the deadline for filing a notice of intention to oppose or a statement of grounds and particulars. You’ll need to-

• File in an approved form
• Pay the relevant fee
• Provide a declaration detailing why the deadline was missed or cannot be met

Acceptable grounds include-

• Error or omission by you or your agent (or even the Registrar)
• Circumstances beyond your control, such as illness, natural disasters, or unavoidable delays

The Registrar won’t automatically grant an extension, especially if it’s applied for after the deadline. You must show that not only do you have a valid reason for needing the extension, but also a sufficient reason for not applying on time. If the Registrar is considering rejecting the extension, you’ll be given the chance to request a hearing and arguing your case.

Amendment of documents

Sometimes you realize there’s a mistake or omission in your opposition documents. That’s not the end of the road. A notice of intention to oppose can be amended to fix clerical errors or change the named opponent (if the opposition is to continue in another person’s name). The Registrar can approve the amendment without notifying the applicant but may allow a hearing if the amendment is refused. A statement of grounds and particulars can also be amended, but the process is stricter. The Registrar will notify the applicant and give both parties the opportunity to comment. We often help clients review and tidy up opposition documents to ensure they’re robust and compliant, i.e. especially when the grounds of opposition evolve.

Evidence stage and hearing

If the applicant files a notice of intention to defend, the next stage is evidence.

This is your chance to show actual use of the trade mark or justify non-use (for instance, if use was prevented due to import restrictions or unforeseen events). If you don’t file evidence or request a hearing within the set timeframe, your opposition is deemed abandoned, and the trade mark may be removed.

The Registrar will make a decision after the evidence stage, i.e. either at a hearing or based on the written record. If your opposition succeeds, the trade mark stays on the Register. If it fails, the mark may be removed for some or all of the goods or services listed in the non-use application. Both sides have the right to appeal to the Federal Court or the Federal Circuit and Family Court.

Thus, the opposition process is about speed, clarity, and proper process. A misstep on timing, format, or content can result in losing your trade mark, and sometimes without even getting to the evidence stage.

At our firm, we-

• Monitor publications of non-use applications to catch threats early
• File complete and compelling opposition documents on time
• Help clients gather evidence to show genuine use or valid reasons for non-use
• Represent clients in hearings before the Registrar or on appeal

If your trade mark is targeted for removal, don’t wait until it’s too late. Get in touch with us early, and we’ll help you protect what’s yours. Contact us now!