What Trade Mark Applications Can I Oppose?

George Raptis

• 15 July 2021
• 14 September 2021
• 5 min read

Put simply, trade mark opposition is where someone formally objects to the registration of a trade mark. You can initiate a trade mark opposition for a number of reasons, the most common being that you oppose the accepted trade mark on the basis that it is too similar to your existing trade mark. This article outlines the types of trade marks that you can oppose and the basic elements of trade mark opposition.

Different Trade Mark Applications 

There are four different types of trade mark applications that you can oppose. Standard across all four applications is that IP Australia has already accepted them for registration, meaning you can only oppose applications that are registered on the Australian Trade Mark Search. 

1. Newly Registered Trade Mark

If you applied for a trade mark that IP Australia has not yet registered, this would be considered an application for a newly registered trade mark. Once IP Australia approves this application, they will advertise the trade mark as being accepted on the Registry. There is a two-month window from the date of advertisement in which anyone can oppose the newly accepted trade mark application. 

2. Pre-Existing Trade Mark

Another trade mark application that you can oppose is a trade mark already existing on the Registry that the owner has not used. For this opposition to proceed, you would have to prove that the trade mark:

• has not been in continuous use over a three year period; and
• was registered throughout the three year period of non-use. 

If IP Australia is satisfied that a trade mark has not been in use, they will likely remove the application from the Registry. 

Whilst a continuous non-use of a trade mark over a three-year period might be clear in certain instances, non-use can be difficult to prove. Trade marks can be in use if they are used to:

• sell at least one good or service; or
• advertise a good or service that has not necessarily resulted in a sale. 

3. Time Extensions

A trade mark owner can apply for an extension of time for any procedure that the Trade Marks Act requires them to do. For example, suppose you miss the two-month window to oppose a new trade mark application. In that case, you may be able to apply for a time extension. IP Australia will grant an extension if satisfied that a circumstance beyond your control has prevented you from submitting an opposition on time. Third parties can oppose these extensions. However, you can only oppose applications for an extension of time where the extension exceeds a three month period. 

4. Amendments to a Trade Mark Application 

Finally, you can oppose applications amending existing trade mark applications. The Registry will update whenever a trade mark owner amends their application, and IP Australia will revise their trade mark profile on the Registry. 

Trade Mark Opposition Basics 

If you oppose any trade mark application, there are some key elements involved in the process. The first is filing your notice of intention to oppose. 

A notice of intention is a form that notifies IP Australia and the trade mark applicant that you intend to oppose their application. 

Once you have filed your notice and paid the relevant Government fee, you have one month to submit a statement of grounds and particulars. 

A statement of grounds and particulars is where you specify what legal ground you are relying upon to oppose the trade mark application. 

The grounds for opposing a trade mark application are extensive. Some of the more common grounds for opposition include: 

• a similar trade mark already exists;
• your existing trade mark (registered or unregistered) has acquired a reputation in the market;
• the applicant is not the true owner of the trade mark;
• the applicant does not intend to use the trade mark; or
• the trade mark application contains a false indication of its geographical origin. 

Once the applicant receives your opposition, they have one month to decide whether they will defend your opposition. This then initiates an evidentiary process where you must submit evidence supporting your application, which the applicant then answers with counterevidence. Finally, you can respond with evidence in reply. 

Once the evidence stages are complete, your opposition will enter the hearing stage, where IP Australia will make a final decision based on the evidence filed. 

Key Takeaways 

You can oppose trade mark applications for:

• newly accepted applications on the Registry;
• pre-existing applications that have not been in use over a three year period;
• time extensions for any procedures required by the Trade Marks Act; and
• amendments to trade mark applications. 

If you need help with opposing a trade mark application, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page. 

Frequently Asked Questions