Trade Mark Opposition Matters

Trade Mark Opposition

If another person feels that your trade mark should not become registered, they will have an opportunity to lodge a Notice of Intention to Oppose after your trade mark has been advertised in the Australian Official Journal of Trademarks.  

Likewise, if you feel that a trade mark should not become registered, you can lodge a Notice of Intention to Oppose once said mark has been advertised as accepted by IP Australia.

Common grounds on which a trade mark can be opposed include, but are not limited to:

• The mark is too similar to an earlier filed or registered trade mark
• The mark is essentially the same as a trade mark first used by another party (even if not registered)
• another trade mark has such a reputation in the marketplace, use of the applied-for mark would be likely to cause confusion due to the reputation of the other mark
• The trade mark is overly descriptive or lacks distinctiveness
• The trade mark was filed in bad faith

Steps involved in a trade mark opposition at 17 October 2025*

1. The person opposing has two months, from the date of acceptance being advertised, to lodge their Notice of Intention to Oppose (NIO).
2. They must then file a statement of their grounds and particulars (SGP) as to why they feel the trade mark should not be allowed to register. This has to be filed within one month from the date that they filed the NIO.
3. The trade mark applicant has to file a notice of their notice of intention to defend (NID) against the opposition. This must be done within one month of receiving a copy of the SGP. If the trade mark applicant does not file this notice, the trade mark is refused and the opposition is over at this point.
4. If the applicant files the NID on time, the person that is opposing then has three months to file evidence in support of their opposition.
5. The Applicant then has a turn to file evidence-in-answer and must do so within three months.
6. If the defendant wishes to submit any evidence in reply, they have to do so within two months of receiving the Applicant’s evidence in answer. This ‘round’ must strictly reply to the Applicant’s evidence.

Once evidence phases are completed, the parties will be invited to confirm how they wish the opposition to be decided. This can be based purely on the evidence material, by way of a hearing by written submissions only, or by way of an oral hearing (held via Video conference). Irrespective of how the matter is decided, once a decision issues, it may be appealed in the Federal Court of Australia or Federal Circuit Court of Australia. If no appeal is filed the decision will become final, and, costs will typically be awarded (in accordance with a set schedule) against the unsuccessful party.  

* At the time of writing, the period of time to comment on some proposed changes – including to the deadlines for filing certain opposition documents – has recently ended. As such, the above time frames may change should the proposed amendments be accepted.  

It’s really important to understand that opposition proceedings are highly technical, evidence-heavy and time-critical. Whilst there is the ability to seek an extension of time, it is often difficult to obtain an extension of time so they should not be relied on as a matter of course.

Help From Your Trade Marks Attorney

Oppositions involve strict deadlines, evidence rules and legal arguments and the financial implications can be significant.   A skilled trade marks attorney can improve your chances of success.

In the event you encounter a trade mark opposition, MMW Trademark Services can attend to this on your behalf.  This can include filing of the notice of intention to defend, receiving any evidence of the other party and reviewing/reporting on it as well as preparing and serving any evidence you may need to provide.

Likewise, if you become aware of another person trying to register a trade mark you don’t feel that they should, you may wish to contest the matter.  Our experienced trade mark experts can assist in drafting and submitting the relevant notices and statements on your behalf.

You’ll find more details in our comprehensive guide to trade mark oppositions.