47.1. Filing a notice of opposition

Any person with legal personality can oppose the registration of a trade mark or the extension of protection to an International Trade Mark designating Australia (IRDA) by filing a notice of opposition.

A notice of opposition means a notice of intention to oppose and a statement of grounds and particulars (regs 5.2, 17A.29).  

1.1  Notice of intention to oppose

The notice of intention to oppose comprises the first part of the notice of opposition. The notice of opposition must be completed by filing a statement of grounds and particulars. Together, the notice of intention to oppose and the statement of grounds and particulars form a valid notice of opposition (regs 5.5, 17A.32).

1.1.1 Time limits

Any person may oppose registration / protection of a trade mark by filing a notice of intention to oppose within two months from the day on which acceptance of the trade mark application was published (regs 5.6(1), 17A.33(1)).

If the notice of intention to oppose was filed late and an application for an extension of time has not been received/granted (regs 5.9, 17A.34C), the notice of intention to oppose will be deemed not receivable. The parties will be informed of the reason why the notice is not receivable and the relevant fee will be refunded.

If the notice of intention to oppose is filed before the trade mark application has been published as accepted, the notice will be deemed not receivable and the fee will be refunded.

1.1.2 Fees and formalities

The notice of intention to oppose must be filed with the Trade Marks Office in an approved form and be accompanied by the relevant fee (see item 7 in Schedule 9 of the Trade Marks Regulations 1995). The notice will not be processed until the fee is paid (reg 21.21A).

A notice of intention to oppose form is available on IP Australia’s website. An opponent is not required to use this form, however it may be a useful guide to ensure the notice of intention to oppose is in the approved form.

If the notice of intention to oppose is not in the approved form, the potential opponent will be advised. If it is possible to bring it into the proper form they will be given an opportunity to do so. If it is not possible, the notice will be deemed not filed and the filing fee returned.

If it is not clear whether the notice of intention to oppose has been filed in the name of a person with legal personality, the name will be queried in writing and an amendment to the notice if intention to amend the opponent’s name may be required.

1.1.3 Processing

Once the fees and formalities are in order, the notice of intention to oppose will be processed and a copy will be given to the trade mark applicant or IRDA holder.

1.2 Statement of grounds and particulars

1.2.1 Time Limits

A statement of grounds and particulars must be filed by the potential opponent within one month from the day the notice of intention to oppose is filed (regs 5.7, 17A.34A).

If the statement of grounds and particulars has not been filed within the time limit and an application has not been received/granted to extend the time (regs 5.9, 17A.34C), the statement will be deemed not receivable and the parties will be advised accordingly.

1.2.2 Fees and formalities

The statement of grounds and particulars must be filed in the same name as the notice of intention to oppose.

The statement of grounds and particulars must be filed with the Trade Marks Office in an approved form.

A statement of grounds and particulars form is available on IP Australia’s website. An opponent is not required to use this form, however it may be a useful guide to ensure the statement of grounds and particulars is in an approved form.

There is a fee associated with filing a statement of grounds and particulars. This fee is subject to a couple of thresholds, below which no fee applies. The thresholds are 3 grounds of opposition (s 58A is not counted), and 10 trade marks particularised under the s 44/reg 4.15A ground. For each ground from the 4^th ground nominated and above, and for each trade mark from the 11^th trade mark particularised and above, a fee of $250 is added.

Examples: 

1. A statement of grounds and particulars nominates ss 44, 58A, 58 and 60. The s 44 ground particularises 3 trade marks.

For the purposes of fee calculation, s 58A is not counted. This leaves 3 grounds, which is under the threshold. The s 44 ground is also below the threshold. The fee is therefore $0.

2. A statement of grounds and particulars nominates ss 42(b), 43, 44, 58, 58A and 60. The s 44 ground particularises 11 trade marks.

 For the purposes of fee calculation, s 58A is not counted. This leaves 5 grounds, which above the threshold by 2. The s 44 ground is above the threshold by 1. The fee is calculated as 2x$250 + 1x$250 = $750.

1.2.3 Adequacy checking process

The Registrar's delegate must assess the adequacy of the statement of grounds and particulars (regs 5.8, 17A.34B). A statement of grounds and particulars will be adequate if all of the grounds of opposition nominated in the statement are adequately particularised.

If the statement is adequate, the statement will be processed and a copy will be given to the trade mark applicant or IRDA holder (regs 5.8(2), 17A.34B(2)).

If the statement of grounds and particulars nominates grounds of opposition which are not adequately particularised, the delegate will allow the opponent to provide more information in support of the nominated ground/s within a set time period (regs 5.8(3)(a), 17A.34B(3)(a)).

If the opponent files more information and that information addresses the inadequacy, the delegate will process the SGP and give a copy of the statement of grounds and particulars and the additional information to the trade mark applicant or IRDA holder (regs 5.8(5), 17A.34B(5)).

If the opponent does not file more information or the additional information does not address the inadequacy, the delegate will delete from the statement the grounds/material that are inadequate and treat the amended statement as adequate (regs 5.8 (4)(b), 17A.34(4)(b)). The delegate will give a copy of the amended statement to the opponent and trade mark applicant or IRDA holder.

If all of the grounds are inadequately particularised, and the opponent is unable to overcome this, the delegate will dismiss the opposition (regs 5.8(3)(b), 17A.34B(3)(b)), and advise both parties of the dismissal.

The opponent may apply to the Administrative Review Tribunal for a review of the delegate's decision to delete material from the statement of grounds and particulars, or to dismiss the opposition.

If the opposition is in relation to an IRDA, the Registrar will notify the International Bureau when a notice of intention to oppose and an adequate statement of grounds and particulars has been filed and processed.

1.2.4 Formal requirements

The form provided on the IP Australia website will provide guidance as to what information must be included in the statement of grounds and particulars, and in what order. However, delegates should note that substantial compliance with the form is sufficient. ^{1 (Acts Interpretation Act 1901 (Cth) s 25C.}

Information that is likely to be necessary in all cases:

• the name and contact details of the opponent
• the trade mark number to which the opposition relates
• one or more grounds of opposition
• the facts and circumstances forming the basis for each nominated ground (‘particulars’)​​​​​​​

Note: The approved form requires that particulars be given under each ground. It is not sufficient for an opponent to list grounds and then provide particulars that are not specific to any ground, since this will leave it unclear to all parties what facts and circumstances purport to relate to which ground.

The statement of grounds and particulars must set out the material facts on which each ground of opposition is based. A material fact is a fact which is necessary for the purpose of formulating a complete ground of opposition. The opponent is not required to state the legal effect of the facts on which they rely; they are only required to state the facts themselves. Failure to disclose sufficient information in the particulars will result in the statement being assessed as inadequate.

1.2.5 Particularisation of grounds of opposition

Section 39

Particulars would need to disclose at least the sign alleged to be prescribed or prohibited under s 39.

The delegate may decide to check whether the sign nominated by the opponent is in fact prohibited or prescribed by cross referencing with reg 4.15 of the Trade Marks Regulations 1995, Part 30 of the Trade Marks Office Manual of Practice and Procedure and/or relevant Australian Trade Mark Search records.

Section 41

This ground is not available for certification or defensive trade marks.

Particulars under this ground would need to broadly fall within the scope of s 41 as discussed in this Manual. That is, the particulars need to provide brief reasons why other traders, acting without improper motive, are likely to want to use the sign/trade mark.

However, given that assessment of the SGP is an interlocutory step, it is not necessary that this information go as far as to make out the ground.

Pay particular attention to the assertions as to the capability of the trade mark to distinguish the goods/services from those of other traders. Some examples of inadequate particulars include:

• The particulars only refer to the need of the opponent to use the trade mark due to its established reputation.
  
  This information alone will not be sufficient, as the requirement is that other traders in general would, without improper motive, desire to use the trade mark.
• The particulars assert that other traders would, without improper motive, desire to use the trade mark without any explanation as to why.
  
  This is merely restating the grounds (which is in effect an absence of any facts and circumstances).
• The particulars identify some facts and circumstances that may have triggered some further investigation by an examiner, but fail to take the crucial next step. For example: the particulars state that a trade mark is a person’s name, but do not go on to at least assert that both the name and the goods/services are commonplace.

Section 42

This is effectively two separate grounds with different tests and requirements. Having nominated s 42 there is no need for the opponent to further nominate either of the paragraphs, but the particulars will need to go to at least one of them.

Particulars for s 42(a) would need to identify what elements of the mark the opponent believes are likely to shock, defame, offend, etc. and briefly outline why.

Particulars for s 42(b) simply need to specify the law/s that use of the trade mark would be contrary to. For example, ‘use would be contrary to law’ would not be a sufficient particularisation since it identifies no specific law. In contrast, ‘use would be contrary to the Competition and Consumer Act 2010 (Cth) and the tort of passing off’ specifies two sources of law, and so would be sufficient.

Section 43

The particulars should describe what connotation within the trade mark itself is likely to deceive or cause confusion.

Section 44 and regulation 4.15A

The particulars must include at least one Australian trade mark application or registration number, or IRDA, or PITM which is not the same number as the opposed application.

If a number is provided that is higher than (or even very close to) the opposed mark, the delegate may decide to check the priority dates of each number and of the opposed application to be sure that this ground of opposition is prima facie capable of being satisfied.

If the priority date of all nominated trade marks are later than the priority date of the opposed application the ground is inadequately particularised.

Section 58

There are broadly two factual settings that will adequately particularise this ground:

1. Prior use of the same (or substantially the same) trade mark. The details required here will typically be:

a. a characterisation of the first used trade mark,

b. a description of the goods/services in respect of which the trade mark is used, and

c. an assertion that the first use was before the priority date of the opposed application.

The delegate assessing the adequacy of the particulars should not consider the similarity (or otherwise) of the first used trade mark to the opposed trade mark.

2. Any other facts that would call into question the applicant’s claim to ownership of the trade mark. For example, that the applicant is merely licensed to use the trade mark or that the opponent is the assignee of the trade mark. In contrast to the previous factual setting, this will not typically require any mention of the circumstances of use of the trade mark.

Section 58A

This ground is available where the opposed application was accepted under s 44(4) [national application] or reg 4.15A(5) [IRDA] or where either of those provisions could be applied in relation to a trade mark included in the particulars for the s 44 ground.

If this threshold requirement has been met, the particulars must set out:

• The number of the earlier trade mark
• The date of first use of that earlier trade mark
• The goods/services the trade mark has been used on
• An assertion that use has been continuous since first use

The delegate should not consider the similarity between the earlier trade mark and the opposed trade mark.

Section 59

The opponent will need to briefly set out what facts and circumstances have led it to believe the applicant had no intention to use, authorise use or assign the trade mark to a body corporate in Australia. Indicating there has been no actual use of a trade mark to date, without something more, is not sufficient. It is commonplace for businesses to wait for registration before using a mark.

Section 60

The requirements under this ground are similar to prior use under s 58, with an additional requirement that the particulars refer to a mark that has acquired a reputation in Australia.

Section 61

The particulars should identify the geographical indication, and provide details of where it is recognised and the goods for which is it recognised.

The delegate should not consider the similarity between the geographical indication and the opposed trade mark.

Section 62

This is effectively two separate grounds with different tests and requirements. Having nominated s 62 there is no need for the opponent to further nominate either of the paragraphs, but the particulars would need to go to at least one of them.

A threshold requirement for s 62(a) is that an amendment was in fact made to the application. If this is satisfied, the particulars would need to indicate which amendment is alleged to have been defective, and briefly outline which part of the Act the amendment was contrary to.

Particulars for s 62(b) should identify the material or representation that is alleged to be false, and briefly outline why the opponent believes this to be the case.

In all cases, some facts and circumstances particular to the case must be disclosed. Merely asserting that an amendment contrary to the Act has occurred, or that a false representation or false material was tendered, will not be sufficient.

Section 62A

The opponent will need to briefly set out what facts and circumstances have led it to believe the application was made in bad faith.  Merely asserting that the application was made in bad faith will not be sufficient.

Section 177

Only available for certification trade mark applications.

Please see the discussion of assessing particulars under s 41.

Section 187

Only available for defensive trade mark applications.

The opponent will need to briefly set out what facts and circumstances have led it to believe that a connection between the goods/services and the registered owner is unlikely.

1.3 Extension of time to file a notice of intention to oppose or a statement of grounds and particulars

It is possible to apply to extend the statutory period to file a notice of intention to oppose or a statement of grounds and particulars.

1.3.1 Grounds for requesting an extension

The allowable grounds for extending the statutory period to file a notice of intention to oppose or a statement of grounds and particular are:

a. an error or omission by the person, the person’s agent, the Registrar or an employee (regs 5.9(4)(a), 17A.34C(4)(a));

b. circumstances beyond the control of the person applying for the extension of time, other than an error or omission by the person, the person’s agent, the Registrar or an employee (regs 5.9(4)(b), 17A.34C(4)(b)).

1.3.1.1 Error or omission by the person, the person’s agent, the Registrar or an employee (regs 5.9(4)(a) and 17A.34C(4)(a)).

Error or omission by employee

PLEASE NOTE:  The reference to an ‘employee’ in this ground is not to an employee of the extension applicant or their agent – see definition of ‘employee’ in section 6 of the Act.

Some guidance on what has been considered by the courts to constitute error or omission of an employee in the context of paragraph 131(1)(b) of the 1955 Act - a similar provision - can be found in Lyons v Registrar of Trade Marks (1983) 1 I.P.R. 416 at 429 (F.C).

Examples of error or omission by an employee of IP Australia would include some, but not necessarily all:

• failures to send a notification required by the legislation;
• failures to act on an application, notice or request;
• failures to act as soon as practicable (s 204).

Error or omission by the person applying for the extension of time, or by the person’s agent.

An extension sought on this aspect of the ground would need to satisfy the Registrar that the need for the extra time was caused by a genuine error or omission on the part of the person concerned, or the person’s agent. See Meath v Kyprianou (1997) 40 IPR 150.  It will sometimes be difficult to distinguish an error or omission, considered in Kimberly-Clark v Commissioner of Patents (No 3) (1988), 13 IPR 569, from simple bad decisions.  See also British Sky Broadcasting Ltd v Skynetglobal Limited (2003) 57 IPR 93.

1.3.1.2 Circumstances beyond the control of the applicant for extension of time, other than an error or omission by the person, the person’s agent, the Registrar or an employee (regs 5.9(4)(b) and 17A.34C(4)(b)).

This provision is equivalent to paragraph 131(1)(a) of the 1955 Act and the scope of that provision was considered in Atomic Skifabrik Alois Rohrmoser v. Registrar of Trade Marks (1987) 7 IPR 551, 558 . This case should provide guidance on interpretation of "circumstances beyond the control of the person concerned".

This force majeure provision encompasses circumstances which neither the person nor their agent could prevent, such as wars and terrorism, arson and vandalism, or forces of nature such as storms, earthquakes and floods.

1.3.2 Fees and formalities

The application for an extension of time to file a notice of intention to oppose or a statement of grounds and particulars must be filed with the Trade Marks Office in an approved form and accompanied by the relevant fee (see item 6 in Schedule 9 of the Trade Marks Regulations 1995). The application will not be processed until the fee is paid.

A form is available on IP Australia’s website. An opponent is not required to use this form however it may be useful as a guide.

The application must be accompanied by a declaration which complies with reg 21.6, setting out the reasons in support of the grounds on which the application is made. If the initial period has expired, the declaration should also include the reason why the application was not made within the period (regs 5.9, 17A.34C).

The delegate will give a copy of the extension request to the trade mark applicant at the same time they notify the parties of their intention to grant/refuse the extension.

1.3.3 Granting the extension of time

In granting an extension of time, the Registrar must be satisfied as to the grounds set out in the application and the reasons given in support of those grounds. If the extension application was filed out of time, the Registrar must also be satisfied that there was sufficient reason for the application not being made within time (regs 5.10, 17A.34D).

If the extension application was made in time and the Registrar is satisfied that one or more of the grounds for the extension has been made out, the extension may be granted provided:

• the Registrar has notified the trade mark applicant of the request and provided them with the application, and both parties have had a reasonable opportunity to make representations concerning the extension application (reg 5.4).

If the trade mark applicant objects to the granting of the extension, and the delegate gives weight to any of the objector’s arguments, the potential opponent must be given a reasonable opportunity to reply to the objection. If the Registrar decides not to grant the extension of time, the opponent will first be given an opportunity to be heard in the matter.

The delegate is not required to give an IRDA holder an opportunity to comment upon the proposal to grant an extension under reg 17A.34C (reg 17A.34C(6)).

• Part 60 The Madrid Protocol - 4.16 Extension of Time to File Notice of Opposition to Protection

If the extension application was made out of time, that is, after the period for filing the notice of intention to oppose or statement of grounds and particulars had ended, the delegate will not necessarily grant the extension even if the extension ground has been made out (regs 5.10(2), 17A.34D(2)). The opponent must also satisfy the Registrar there was sufficient reason for the application not being made before the end of that period.

1.3.4 Reasons for refusing the extension

Reasons for refusing extension requests may include the following:

• the facts contained in the declaration do not support, or make out, the grounds set out in the application.

In the event of a late extension being applied for, the reasons provided in terms of regs 5.10(2) or 17A.34D(2) may not satisfy the Registrar that the application could not have been made before the end of the period.

1.3.5 Period of the extension

Where an extension of time is granted, it must be for a period of time that the Registrar believes is reasonable in the circumstances (regs 5.10(3), 17A.34D(3)).

1.3.6 Procedure

Registrar intends to grant extension

PLEASE NOTE: Extensions to oppose national trade marks and extensions to oppose international trade marks are processed differently.

For extensions to oppose national trade marks, if the extension request is in order, the trade mark applicant will be notified in writing of the delegate’s intention to grant the extension. At the same time the opponent will receive written acknowledgment of the extension application.

The trade mark applicant will be given 14 days to object to the extension of time. They can object by filing written representations or by requesting a hearing in the matter of the extension application. Provided there is no objection from the trade mark applicant the extension will be granted.

For extensions to oppose the protection of an international trade mark, if the delegate is satisfied that the ground for the extension of time has been made out, the extension will be granted and both parties notified accordingly.

Registrar intends to refuse extension

If during the initial check of the extension application the delegate is not satisfied any of the grounds for the extension have been made out, or in the case of a late extension is not satisfied it is appropriate to grant the extension, both parties (in the case of national trade marks) or the extension applicant (in the case of international trade marks) will be notified accordingly. The extension applicant will be given an opportunity to file additional material in support of the grant of the extension or to request a hearing in the matter of the Registrar’s intention to refuse the extension request.

In the case of national trade marks, if additional material is filed which satisfies the Registrar it is appropriate to grant the extension, the trade mark applicant will be given an opportunity to provide written representations or request a hearing before the extension is granted.

Other party objects to the extension

PLEASE NOTE:  The following does NOT apply to extensions in relation to oppositions to international trade marks.

If the trade mark applicant files an objection by way of written representations, the delegate will take these into account before deciding whether to grant the extension.

Although reg 5.4(3) gives the objector the option to request a hearing, regs 21.15 and 21.16 provide that it is at the Registrar’s discretion whether such a hearing would be an oral hearing, or by way of written submissions. A successful objector who has requested and obtained an oral hearing in relation to a dispute over an extension of time may not be awarded its costs unless it can show that there was sufficient need to incur the costs of a hearing rather than making written submissions.

If the extension of time for filing a notice of intention to oppose, or a statement of grounds and particulars is not granted

If the delegate intends to refuse the extension, then the extension applicant will be given the opportunity to request a hearing to determine the matter. In order for the hearing to be set down, the request must be accompanied by the appropriate fee. If a hearing is scheduled both parties will be given the opportunity to be heard (opposition to national trade marks only).

If the delegate, having heard the applicant for the extension, decides to refuse the application, then  they will issue a written decision to that effect. As this decision is potentially subject to appeal, the Hearings Support Unit will wait a period of four weeks from the date of issue of the decision to allow for the service of any appeal documents. If no notice of appeal has been received within that time, the opposition will be discontinued and the trade mark application will continue to registration.