Opposition to Trade Mark Applications

Once a trade mark application is accepted by IP Australia, it doesn’t automatically sail through to registration. It enters a public phase where third parties can challenge it, this is called opposition.

What is opposition?

An opposition is a formal objection lodged by a third party who believes your trade mark should not be registered. It applies both to standard Australian applications and to International Registrations Designating Australia (IRDAs). The opposition period begins after the mark is advertised as accepted and lasts two months, although extensions can be requested.

Oppositions are governed by the Trade Marks Act 1995 and the Trade Marks Regulations 1995. They provide an opportunity for third parties, usually businesses with potentially conflicting interests, i.e. to prevent registration on specific legal grounds.

The Registrar’s role is limited to overseeing the process. They don’t initiate oppositions and won’t investigate claims beyond what each side presents. Once all evidence has been submitted, the matter may be decided through a hearing or written submissions, and the Registrar’s delegate will issue a decision. This can be appealed in the Federal Court if necessary.

Who can oppose?

Anyone can file an opposition, but in practice, it’s usually a competitor or someone who believes they have earlier rights in a similar or identical trade mark. Opponents must lodge a Notice of Intention to Oppose, followed by a Statement of Grounds and Particulars, and then the parties move through a structured evidence phase.

Key grounds for opposition

Below are the most commonly used and legally significant grounds for opposing a trade mark registration.

• Applicant is not the true owner under section 58- Under Australian law, ownership of a trade mark is based on first use, not just filing. A party may oppose registration on the basis that they were the first to use the same (or a substantially identical) trade mark in relation to the same goods or services. This is a common and powerful ground, especially when smaller businesses discover that a newer player has tried to register “their” brand. For this ground to succeed, the opponent must prove-
  • They used the mark in Australia before the applicant either used it or filed their application.
  • The mark in question is substantially identical to the applicant’s.
  • The goods or services are the same kind, not just similar.

• Opponent has prior use under section 58A- Even if the applicant is technically the first to file, the trade mark can be opposed if the opponent has used a similar mark earlier and continuously. This is particularly relevant where two businesses have coexisted without formal registration, and one seeks to secure exclusive rights through the register. To succeed under this ground-
  • The opponent must show continuous use of their mark from a date before the applicant’s first use or filing.
  • The marks must be substantially identical or deceptively similar, and used for similar goods or services.

• No intention to use under section 59- A trade mark application can be opposed if the applicant did not genuinely intend to use the trade mark in commerce. This ground is often used to challenge “trademark squatters”, i.e. individuals or companies registering marks purely for resale or leverage. While the act of applying is taken as evidence of intention, opponents can succeed if they can prove:
  • The application was speculative, defensive, or strategic rather than genuine.
  • The applicant has no real connection to the goods or services claimed.
  • Evidence (or lack thereof) after the filing date supports a lack of genuine intention.

• Reputation-based objection under section 60- This ground requires evidence that the opponent’s trade mark was well-known at the relevant date. Sales data, advertising, media coverage, and brand surveys are typically used to prove reputation. There must also be a real risk that consumers will be confused, i.e. not just a remote possibility. A trade mark can be opposed if:
  • The opponent’s mark had a reputation in Australia before the filing date, and
  • Use of the applicant’s mark would likely cause confusion or deception because of that reputation.

• False or misleading geographical indications under section 61- This ground applies where the trade mark includes a false geographical indication, such as a place name suggesting origin or quality. For example, applying to register “Champagne Gold” for non-French sparkling wine might trigger opposition under this ground. However, the applicant may be able to defend their application if-
  • The goods really do come from the place indicated.
  • The sign is no longer recognized as a geographical indication.
  • The use predates the recognition of the term as a protected indication.

• Improper Amendments or False Evidence under section 62- It’s not enough to show the information was incorrect; the opponent must prove it was material and directly led to acceptance of the trade mark. This ground applies in two situations-
  • Section 62(a)- If the application was amended improperly, for example, if the owner’s name was changed without authorization.
  • Section 62(b)- If the Registrar accepted the mark based on false statements or misleading evidence.

• Bad faith under section 62A- Perhaps the most serious ground, section 62A allows opposition where the application was filed in bad faith, that is, in a way that falls short of acceptable commercial behavior. This ground has been used successfully in several high-profile cases. Courts have confirmed that bad faith involves a test of commercial honesty, judged by what reasonable people in the industry would view as acceptable conduct. Examples include-
  • Registering a trade mark solely to block a competitor or demand payment.
  • Copying a foreign brand not yet active in Australia, with the intent to profit from it.
  • Deliberately filing misspelled versions of well-known marks.

Certification and Defensive Marks

Special rules apply for certification trade marks (which indicate that goods or services meet a specific standard) and defensive trade marks (typically registered by well-known brands for protection in unrelated classes). Oppositions can be based on technical or procedural defects, such as the absence of appropriate rules for use, lack of public benefit, or misuse of the mark outside its intended scope.

Opposing an International Trade Mark (IRDA)

Most of the above grounds also apply to International Registrations seeking protection in Australia under the Madrid Protocol.

The key regulations for opposing an IRDA application are set out in regulation 17A.34, and the grounds include sections 39, 41, 42, 43, 44, 58, 58A, 59, 60, 61, 62A of the Act.

Thus, opposing a trade mark registration, or defending your mark against one, is not just about ticking boxes. It’s a complex, evidence-based process that requires careful strategy and attention to detail.

Whether you believe someone is trying to hijack your brand, or your trade mark is being unfairly challenged, we’re here to help. From preparing solid evidence to representing you at hearings, our team works with you every step of the way to protect your brand and position.

Got a question about trade mark opposition? Let’s talk.