3. Opposition to a non-use application

Date Published

Section 96 provides that a non-use application may be opposed.  If it is not opposed, neither the Registrar nor a court has discretion to refuse to remove the trade mark from the Register (see section 97). In the case of an unopposed application made to the Registrar, the registration will be removed after the end of the opposition period. In the case of a similar application made to a court, the court must order removal and a copy of the order must be served on the Registrar, who must comply.

If the non-use application is opposed, the opposition process is governed by the regulations. The main stipulation in the Act itself is that the notice of opposition must be in a form approved by the Registrar (or the court) and that it must be filed in accordance with either the regulations or the court rules, as appropriate.

The opposition process is initiated, under regs 9.8 and 17A.48G  by filing at the Trade Marks Office a notice of intention to oppose, accompanied by the appropriate fee.

PLEASE NOTE: Prior to 15 April 2013, the opposition process was initiated by filing a single document called a notice of opposition and the appropriate fee.  

The notice of intention to oppose must be filed within two months of the advertisement of the non-use application in the Official Journal.

PLEASE NOTE: If the removal application was advertised before 15 April 2013, the period in which to oppose is three months from the day on which the removal application was advertised in the Official Journal.

The notice of intention to oppose must be followed by a statement of grounds and particulars. The statement of grounds and particulars must be in an approved form and filed at the Trade Marks Office within one month of filing the notice of intention to oppose. There is no fee associated with filing a statement of grounds and particulars.

Together, the notice of intention to oppose and the statement of grounds and particulars comprise a notice of opposition (regs 9.7, 17A.48F).

The non-use applicant is required to file a notice of intention to defend with the Trade Marks Office within one month of being given a copy of the statement of grounds and particulars.  

If a notice of intention to defend is not filed, the Registrar may take the opposition to have succeeded and refuse to remove the trade mark from the Register, or refuse to cease protection of an international trade mark (regs 9.15, 17A.48Q).