47.3. Filing a notice of intention to defend

PLEASE NOTE: A notice of intention to defend is not applicable if the opposition proceeding commenced before 15 April 2013 by filing a notice of opposition.   

Once an opponent has filed a notice of opposition (comprised of a notice of intention to oppose and an adequate statement of grounds and particulars) the trade mark applicant or IRDA holder must file a notice of intention to defend if they wish to contest the opposition and maintain their rights.

If a notice of intention to defend is not filed, the trade mark application will lapse (s 54A).

For an IRDA, if the holder does not file a notice of intention to defend, together with an Australian or New Zealand address for service, the Registrar may decide to take the opposition to have succeeded and refuse protection to the holder (regs 17A.34H(2) and (4)).

If the IRDA holder does not provide the Registrar with an address for service in Australia or New Zealand, the Registrar is not required to take any action in response to the notice of intention to defend, or to give the IRDA holder an opportunity to make written representations or to be heard (regs 17A.34H(5) and (6).

The Registrar will notify the parties of the status of the opposition after the notice of intention to defend is or is not filed.

3.1 Time limits

In an opposition to registration, the notice of intention to defend must be filed within one month from the day the trade mark applicant is given a copy of the statement of grounds and particulars (reg 5.13).

An IRDA holder must file a notice of intention to defend within one month from the day the Registrar notifies the International Bureau that a complete and adequate notice of opposition has been filed (reg 17A.34H)

However, to minimise delays, the Trade Marks Office will also notify the IRDA holder directly when a notice of intention to oppose and an adequate statement of grounds and particulars have been filed.  

3.2 Fees and formalities

The notice of intention to defend form is a very basic document in which the trade mark applicant or IRDA holder indicates their intention to contest the opposition. There is a form available on IP Australia’s website which may be used, but a simple letter from the trade mark applicant will be sufficient.

However, as explained above, it is very important that an IRDA holder also provides notification of their address for service in Australia or New Zealand when they file a notice of intention to defend. The Office will give IRDA holders a copy of the notice of intention to defend form, and information about providing an Australian or New Zealand address for service when giving a copy of the notice of intention to oppose.

There is no fee associated with filing a notice of intention to defend.

3.3 Extension of time to file a notice of intention to defend

It is possible to apply to extend the time for filing a notice of intention to defend. Regulation 5.13A(2) provides that an application to extend time must be filed within two months from the end of the original deadline to file the notice of intention to defend. The application must be in approved form and be accompanied by a declaration stating the relevant facts and circumstances (reg 5.13A(3)).

An applicant may only seek an extension of time on the following grounds (reg 5.13A(4)):

• An error or omission by the person, the person’s agent, the Registrar or an employee;
• Circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.​​​​​​​

The Registrar may grant an application under subregulation 5.13A(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the application justify the extension (reg 5.13B).