Opposing a Trademark Application

Category: Trademark Information

With so many entrepreneurs today trying to establish their own businesses, protecting your own has never been more important. Aside from your business’ assets, employees and services, there is one intangible asset that businesses should protect:  intellectual property.

There are three types of intellectual property protection for businesses, including trademarks, patents and copyrights.  These protect a business’ ideas, concepts and overall branding.

Trademarks exist to give you exclusive rights to your company’s overall brand representation, from your name, logo and tagline which help your business to stand out and re-enforce your corporate identity.

Protecting your business with trade marks

Aside from helping you establish a strong brand, when you trademark your business’ logo or other unique elements, competitors will not be able to use them to piggyback on your success or outright mislead customers. Businesses, no matter what size, should not overlook trademarks as one of the most important steps in securing their brands.

However, registering for trademark is only the start of the continuous process of protecting your brand. As a business and trademark owner, regular monitoring of the market for potential infringement should be prioritised.

How to Oppose Trademark Applications

An opposition is a formal complaint to a trademark application. While this can be a costly and complicated process, it’s an effective and crucial way to safeguard the brand you worked hard creating. Regular checking of the Australian Trademarks Register and Official Journal of Trademarks is one way to monitor trademark applications.

If you see an application for a trademark that is significantly similar to yours, you can start the opposition process by filing a notice with IP Australia. This step comes with a fee which needs to be paid within two months.

After filing the notice, you need to file a statement of grounds and particulars. This is where you specify the legal grounds for opposing the trade mark. The grounds and particulars of your opposition must refer to the Trade Marks Act 1995. Failing to file a statement of grounds and particulars within one month of filing the notice will let the application proceed unopposed to registration. In some cases, the other party will counter your opposition by filing a notice of intention to defend.

After filing the grounds of your opposition, declaring evidence is a crucial part of the process. You must file the evidence to IP Australia not later than three months after receiving the applicant’s notice to defend. The evidence you provide shall support the grounds you declared for opposing. It should be relevant to each ground as this will establish the validity of your opposition. If you do not file any or adequate evidence, the defendant will be notified.

The last possible step of the process is requesting a hearing after the exchange of evidence. After both parties submit statements of support, the hearing officer will make a decision.

Pinnacle TMS understands all aspects of trademarking and understand the importance of protecting you trade marks.  We will refer our clients to industry leading legal teams who can assist you with the opposition process.

A trademark is your business’ property and Pinnacle TMS is here to help. As one of the leading Trademark Specialists in Australia, we try to minimize your risk of having your application opposed and having to incur the costs of defending your brand.   We can also manage your trade mark portfolio to provide a consistent approach to your branding worldwide.


Call us on +61 2 9520 4366 and let us help you register and manage your trade marks so you can have peace of mind to grow your business.  If you would like more information, our videos on our website can help.  www.pinnacletms.com.au