Trademark oppositions in Australia are governed under Part 5 of the Trade Marks Act 1995 and Trade Mark Regulations 1995 under the authority of Intellectual Property Office of Australia.
Any party who believes that a published trademark may negatively affect their business can oppose its registration.
Procedure for trademark opposition:
- Notice of Intention to Oppose: The Notice of Intention to oppose must be filed within 2 months of the trademark’s publication in the journal. This initiates the formal opposition process.
- Statement of Grounds: The Statement of Grounds must be filed within 1 month after submitting the notice of intention to oppose. It must clearly outline the grounds for opposition and the supporting facts. Failure to file this statement may result in dismissal of the opposition by the Registrar.
- Notice of Intention to Defend: The trademark applicant must respond within 1 month of receiving the opponent’s statement. If not filed, the application lapses and the opposition succeeds automatically.
- Submission of the Evidence: After a Notice of Intention to Defend is filed, the parties have an opportunity to file evidence. Evidence must be submitted as declarations.
- Opponent’s evidence: Opponent has 3 months to file supporting evidence after applicant’s defence notice.
- Applicant’s evidence: Applicant has 3 months to respond with counter-evidence from the date of submission of Opponent’s evidence.
- Opponent’s reply to evidence: Opponent has 2 months to file reply evidence, if needed.
- Hearing: After the evidence phase, either party may request a hearing. If a hearing is requested, the parties will have an opportunity to make submissions before a hearing officer. The hearing officer may choose between the oral hearing (typically held in Canberra or via phone) and written submissions.
- Decision and Appeal: A written decision is issued based on the hearing or submissions. If there is no oral hearing, a decision will be issued based on the evidence and any written submissions filed by the parties. Parties may appeal to the Federal Court of Australia or the Federal Circuit Court within 21 days of the decision.