Australia: What the changes to Australian trade mark opposition procedures will mean for you

Amendments to Australian trade mark legislation come into force on 15 April 2013. The Regulations implementing these amendments have gone through various stages of review and IP Australia has released the latest draft of these Regulations.

The objective is to reduce delays in the resolution of substantive oppositions to applications for registration and oppositions to non-use removal applications. For less frequent oppositions to amendments and extensions, the Registrar will have broader powers to make directions so they may be resolved as quickly as possible.

The changes will apply to all oppositions commenced after 15 April 2013 with transitional provisions applying to oppositions already underway.

This article is intended to provide guidance on how the most significant changes will impact upon trade mark opposition procedures.

What an Opponent will have to do.

The opposition documents

  • The opposition period has been reduced from 3 months to 2 months. An opponent will have to file a Notice of Intention to Oppose (NIO) within 2 months of advertisement of acceptance of a trade mark application or advertisement of a non-use removal application. It will then have a further 1 month period to file a Statement of Grounds and Particulars (SGP) which will need to describe the material facts on which each ground of opposition is based. Together, the NIO and SGP will constitute the Notice of Opposition.
  • For oppositions commenced after 15 April 2013 to an application advertised before 15 April 2013, an opponent will still have the current 3 month period to file the NIO and then have a further 1 month to file the SGP.


There is provision to obtain an extension to file the NIO and SGP in limited circumstances, namely error or omission, or circumstances beyond the control of the opponent.

What an Applicant will have to do.

If an applicant wants to defend its application and contest the opposition, it must file a Notice of Intention to Defend (NID) within 1 month of being given the opponent's SGP. Failure to do so will result in lapsing of its trade mark application or failure of the removal application.


The amending Regulations do not specifically deal with extensions for filing a NID, but it appears extensions will be available under the general extension provisions of the Act which require the applicant to establish error or omission, circumstances beyond its control or special circumstances justifying the extension to file the NID. These grounds are slightly broader than those for extending the period for filing the opposition documents.

Both parties

Evidence timetable

The timetable for filing evidence has also been modified.

  • Provided the applicant files a NID, the opponent will have 3 months from being given the NID to file evidence in support.
  • The applicant will then have 3 months to file evidence in answer and the opponent will then have 2 months for any evidence in reply.
  • The evidence in reply period has been reduced from 3 months.
  • There will no longer be any opportunity to file any further evidence.

In an opposition to a non-use removal application, if an opponent does not file evidence in support or ask for a hearing, the opposition is deemed to have ended and the applicant for removal prevails.

Extensions for filing evidence

The extension provisions have been tightened and the explanatory statements to the new Regulations make it clear that extensions will be closely scrutinised.

  • An extension will only be available where the requesting party has made all reasonable efforts and, despite acting promptly and diligently, is unable to file evidence within the time permitted, or there are exceptional circumstances that justify the extension.

Information provided to Registrar

Outside of the evidence procedures, there is provision for a party to provide the Registrar with information which may be considered in deciding the opposition. It remains to be seen how this will be utilised to admit information which is not strictly evidence but which may have a bearing on the Registrar's decision. The explanatory statements indicate it is not intended for this provision to be used as a substitute for the repealed further evidence provisions.

Cooling off/Suspension of Proceedings for Negotiation

It will no longer be possible to seek ongoing extensions for the purpose of negotiations. Rather, the parties will be able to agree to a cooling off period at any time after the opposition documents have been filed.

  • The opposition can be initially suspended for a period of 6 months which can be extended by agreement for a further 6 months.
  • The Registrar can only grant one cooling off period up to a maximum of 12 months.
  • Either party can request termination of this cooling off period at any time.
  • The proceedings restart and the timeframes are reset once the cooling off period ends.


Once all evidence is completed, a party may request a hearing which may be an oral hearing or by written submissions. The Registrar has a discretion to exercise in deciding whether to grant an oral hearing; however, we are anticipating that oral hearings will be granted on substantive opposition matters when sought.

While pre-hearing submissions have become more commonplace in recent time, the changes mean that there will now be a requirement for:

  • The opponent to file a summary of submissions at least 10 business days before the hearing; and
  • The applicant to file a summary of submissions at least 5 business days before the hearing.

This procedure is designed to identify clearly the issues in dispute prior to the hearing and avoid any element of surprise. Failing to comply can have consequences in any costs order made.

Oppositions commenced before 15 April 2013

The Regulations contain transitional provisions to deal with oppositions which are already underway before 15 April 2013. The manner of drafting these provisions may give rise to ambiguity and it may become necessary to refer to the explanatory statements to give effect to the intention of these provisions.

Evidence timetable

The old regime of evidence in support, evidence in answer and evidence in reply needing to be filed in 3 monthly intervals will continue to apply to all oppositions already underway where there is no hearing date or notice of a hearing issued by 15 April 2013.

It appears the current further evidence provisions may not apply to oppositions to registration of national trade mark applications. However, it could be argued the further evidence provisions continue to apply to oppositions to IRDAs and oppositions to non-use removal applications. Nonetheless, it appears the intention is to repeal the further evidence provisions for all oppositions.

Suspension/Cooling Off

Similarly, it may be argued the current provision enabling the Registrar to give a direction to suspend an opposition may not continue to apply to oppositions to registration of national trade mark applications, but may apply to oppositions to IRDAs and oppositions to non-use removal applications. Nonetheless, it appears the intention is for the suspension provisions to continue to apply to all oppositions already underway.


The new provisions dealing with extensions for evidence will apply to all extension applications filed after 15 April 2013.


The new regime for Hearings will apply to oppositions already underway where a hearing is requested after 15 April 2013.

These changes to trade mark opposition procedures will have a significant impact. They are designed to expedite the opposition process and will require clients to provide quite detailed and timely instructions, particularly when settling the opposition grounds and particulars. Parties will need to act promptly when preparing their evidence due to the real risk of extensions being refused, resulting in a party potentially being shut out from relying on formal evidence. Deadlines will become more critical due to the limited opportunities for extensions and the maximum suspension/cooling off period of 12 months will need to be monitored when parties are negotiating.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.