Editor’s Note: this is a part of our ongoing series on global trademark opposition laws and strategy.

The filing of a trademark opposition in Australia can be an effective brand protection strategy for international brand owners seeking to secure their trademark rights.

Here are some things to know.

Who may file.   In Australia, a trademark opposition may be filed by any interested third-party.   The proceeding is commenced by filing a Notice of Intention to Oppose with IP Australia, the governmental agency responsible for administering patent and trademark registrations and contested proceedings.

Applications that can be opposed.   The following Australian trademarks are subject to opposition:

  1.  an application to register a mark that has been advertised an accepted;
  2.   an application to remove a trademark from the register based on non-use;
  3.  an application for an amendment to a trademark application

What are the grounds for an opposition?  Under Australia law, you can file a trademark opposition against a pending application if the trademark is:

  1.  identical or very similar to another registered or pending trademark
  2.  identical or very similar to an international registration that is seeking, or has already gained protection in Australia;
  3.  deceptive or may cause confusion with the reputation of another trademark in Australia;
  4.   the trademark applicant is not the true owner of the Mark.

When filing, the Opposer must also indicate its earlier trademark on which it relies as the basis for the opposition.

What is the time period for filing an opposition?   In Australia, the opposition to a trademark application must be filed within two months of the date of publication of the application in the Australian Official Journal of Trade Marks.

What recourse does a party have if it misses the opposition filing deadline?   An extension to file a notice of intention to oppose may be granted if:

  • there has been an error or omission by the potential opponent or their agent
  • the Australia Trade Marks Office has made an error or omission
  • there are circumstances beyond the control of the potential opposer.

What are the stages of the Opposition?  There is a time period for the submission of evidence. The type of evidence that the Opponent submits is based on the grounds for the opposition.

Stage 1.  Opposer’s evidence in support. The Opposer will generally submit evidence that demonstrates:

  • it is the rightful owner of the trademark;
  • shows its priority, first use and continuous use of the trademark;
  • how it conceived the trademark

Stage 2:  Applicant’s answer.  The Applicant has three months to file an Answer.   This can be evidence in the form of a general objection as well as specific evidence that rebuts the claims.

Stage 3:  Evidence in reply.  This is the final stage that permits the Opposer to rebut any of the evidence submitted by the Applicant.   The Opposer has two months to submit a reply measured from the date of Applicant’s answer.

After final submissions, if the parties request a hearing, the case will be assigned to a hearing officer who generally will render a decision within 91 days from the date of the hearing.   If no hearing is requested, the hearing officer will render a decision based on the parties’ written submissions and evidence.

Editor’s note:  If you require further information about brand protection or trademark opposition procedures in Australia, please contact us.