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Trade mark opposition is a crucial process within the Australian intellectual property landscape, governed by the Trade Marks Act 1995 (Cth). This process allows interested parties to object to registering a trademark before it is officially registered, helping to prevent potential trade mark infringement. Understanding the intricacies of trade mark opposition is essential for businesses and individuals seeking to protect their intellectual property rights or challenge potentially conflicting marks. This proactive approach enables stakeholders to address concerns early in the registration process, potentially avoiding more complex legal disputes in the future.

The Opposition Period

In Australia, the opposition period commences after a trade mark application has been examined and accepted by IP Australia. The application is then advertised in the Australian Official Journal of Trade Marks for a period of two months. During this time, any party can file a notice of intention to oppose the registration of the trade mark.

Filing a Notice of Intention to Oppose

To initiate the opposition process, an interested party must file a notice of intention to oppose within two months of the trade mark’s advertisement date. This notice alerts IP Australia and the trade mark applicant of the potential opposition.

Statement of Grounds and Particulars

Following the notice of intention to oppose, the opponent must file a statement of grounds and particulars within one month. This document outlines the specific grounds on which the opposition is based and provides particulars supporting these grounds. The statement is crucial as it sets the framework for the entire opposition process.

Grounds for Opposition

The Trade Marks Act 1995 (Cth) provides the following grounds to oppose a trade mark application.

Section 41 – Distinctiveness

This section requires that a trade mark must be capable of distinguishing the applicant’s goods or services from those of other traders. A mark can be inherently distinctive or can acquire distinctiveness through use.

A key case concerning section 41 is Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891. This case involved Guylian’s application to register its seahorse-shaped chocolate as a trademark. The Federal Court found that while the shape was not inherently distinctive, it had acquired distinctiveness through use and was capable of registration. The court emphasized that distinctiveness can be acquired through extensive use and promotion, even for shapes that might initially be considered descriptive or common.

Section 42 – Scandalous or Contrary to Law

This section prohibits the registration of trade marks that are scandalous or contrary to law. “Scandalous” refers to marks that offend a significant section of the public, while “contrary to law” includes marks that infringe existing legal rights. While few Australian cases directly address this provision, a notable case concerning the “contrary to law” aspect is Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd [2003] ATMO 10. In that case, the Registrar decided that “Look Good … Feel Better” as a trademark for cosmetics would be contrary to law as it infringed copyright in an existing charitable program.

International cases like the UK’s Hallelujah Trade Mark [1976] RPC 605 can provide guidance for scandalous marks. This case considered whether “Hallelujah” was scandalous for alcoholic beverages, illustrating the type of considerations relevant under this ground.

Section 43 – Likely to Deceive or Cause Confusion

This section allows opposition if the use of the trade mark is likely to deceive or cause confusion among consumers. It aims to protect the public from misleading trade marks.

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, the High Court emphasized the importance of considering the overall impression of the mark, including pronunciation, appearance, and idea conveyed. The court stressed examining the mark as a whole rather than dissecting its individual components.

Section 44 – Identical or Deceptively Similar Marks

This section prevents the registration of a trade mark that is substantially identical or deceptively similar to a previously registered mark in respect of similar goods or services. It protects existing trade mark owners and prevents consumer confusion.

Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 provides guidance on assessing substantial identity. The High Court held that marks should be compared side-by-side and separately, considering their similarities and differences and accounting for the imperfect recollection of the average consumer.

Section 58 – Not Intending to Use the Trade Mark

This section allows opposition if the applicant does not intend to use the trade mark. It prevents the registration of marks solely to block others from using them.

In Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, the Full Federal Court considered the applicant’s intention to use the mark in Australia. The court held that the intention to use must be genuine and present at the time of application and that preparatory steps or plans for future use could be sufficient to demonstrate intention.

Section 60 – Reputation of Another Trade Mark

This section allows opposition based on the reputation of another trade mark. It protects well-known marks from being appropriated by others, even if they’re not registered in Australia.

Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 clarified the scope of protection for marks with international reputations. The Federal Court held that reputation could be established through spillover advertising and knowledge of the mark among travellers, even if the overseas company didn’t directly operate in Australia.

The Opposition Process

Evidence Stage

After the statement of grounds and particulars is filed, both parties have the opportunity to file evidence. This typically occurs in three stages:

  1. Evidence in Support: The opponent files evidence supporting their opposition.
  2. Evidence in Answer: The applicant responds with evidence supporting their application.
  3. Evidence in Reply: The opponent may file evidence in reply to the applicant’s evidence.

Each stage has specific timeframes, typically three months, which can be extended upon request.


Once the evidence stages are complete, the matter proceeds to a hearing before the Registrar of Trade Marks. Parties can choose to have an oral hearing or a hearing based on written submissions.


After considering all evidence and submissions, the registrar will make a decision to:

  • Reject the opposition and allow the trade mark to proceed to registration
  • Uphold the opposition and refuse the trade mark registration
  • Allow the trade mark to proceed to registration with certain conditions or limitations

Appeals from the Registrar’s Decision

If either party is dissatisfied with the delegate’s decision, they can appeal to the Federal Court of Australia within 21 days of the decision.

Practical Considerations

When considering or facing a trade mark opposition, it’s important to:

  • Conduct thorough searches before applying for a trade mark to minimize the risk of opposition.
  • Monitor trade mark journals regularly to identify potentially conflicting applications.
  • Gather and preserve evidence of use and reputation of your trade mark.
  • Seek professional legal advice to navigate the complex opposition process effectively.


Trade mark opposition is a vital mechanism in the Australian intellectual property system. It allows interested parties to challenge potentially conflicting marks before they are registered. The process, governed by the Trade Marks Act 1995 (Cth), involves several stages and can be complex and time-consuming.

Understanding the various grounds for opposition and their interpretation by Australian courts is crucial for both trade mark applicants and potential opponents. The case law in this area continues to evolve, providing ongoing guidance on how these provisions should be applied in practice.

Given the potential impact on a business’s intellectual property rights, it is advisable to seek professional legal assistance when navigating the trade mark opposition process.  IP lawyer, Ben Waldeck can assist whether you are considering opposing a trade mark application or defending your own application against opposition, to help you take steps toward a favourable outcome.