Legal Project Management Plan & Checklist
Purpose of this Guide: Open this plan when your client has filed a trade mark application with IP Australia that has been accepted, and a third party has now filed a Notice of Intention to Oppose. Your client is the applicant defending their right to register. Use this plan when the Statement of Grounds and Particulars has been received and the 2-month window to file a Notice of Intention to Defend is open.
Jurisdiction: Australia - Commonwealth. Proceedings are conducted before the Registrar of Trade Marks at IP Australia. If either party appeals the Registrar's decision, the appeal lies to the Federal Court of Australia or the Federal Circuit and Family Court of Australia (Division 2) (s 56); a Federal Court notice of appeal must be filed within 21 days of the date of the decision (Federal Court Rules 2011, r 34.24). This plan covers the applicant (respondent to the opposition) side only. The corresponding plan for the opposing party is the Trade Mark Opposition (Opponent) plan.
The Process at a Glance: Once the Statement of Grounds and Particulars is received, the applicant must file a Notice of Intention to Defend within 2 months from the day the applicant is given a copy of the Statement (reg 5.13) - failure to file causes the application to lapse (s 54A), although an extension may be sought within a further 2 months on limited grounds (reg 5.13A). The opponent then has 3 months from being given the Notice to file Evidence in Support (reg 5.14(3)). If the opponent files none, the opposition is not deemed ended: the applicant may still file evidence in answer to the Statement and may ask for a hearing. The applicant has 3 months to file Evidence in Answer, which is the key opportunity to establish defences such as honest concurrent use, consent, or prior use. The opponent may then file Evidence in Reply within 2 months, but this is strictly limited to rebutting material in the Evidence in Answer and cannot introduce new grounds. Once evidence is closed, the matter proceeds to a hearing before the Registrar, conducted either orally or in writing. The Registrar issues a decision and costs are awarded under the Schedule 8 scale, which was increased for proceedings commenced on or after 14 October 2024. An unsuccessful party may appeal to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) (s 56); a Federal Court notice of appeal must be filed within 21 days of the decision.
Use this fork when the applicant and opponent in a trade mark opposition are considering resolving the dispute without proceeding to a contested hearing. The cooling-off mechanism allows the parties to suspend the opposition timetable while they negotiate a coexistence deed, consent agreement, or other commercial arrangement that will allow both marks to co-exist on the Register.
Key Legislation and Case Law: Trade Marks Act 1995 (Cth) - Part 5 (opposition to registration), s 42(b) (contrary to law), s 43 (likely to deceive or confuse), s 44 (substantially identical or deceptively similar marks), s 44(3)(a) (defence of honest concurrent use), s 44(3)(b) (defence of consent), s 44(4) (defence of prior use), s 58 (applicant not the owner - prior use ground), s 59 (no genuine intention to use), s 60 (reputation of earlier mark), s 62A (bad faith). Trade Marks Regulations 1995 (Cth) - Part 5 (opposition proceedings), reg 5.13 (notice of intention to defend), reg 5.13A (extension), reg 5.14 (evidence rounds), reg 5.15 (extension of an evidence period), reg 5.16 (cooling-off period), reg 5.17 (hearing), Schedule 9 (fees), Schedule 8 (costs scale - increased for proceedings commenced on or after 14 October 2024). Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025, Schedule 1, commenced 18 December 2025 - the Notice of Intention to Defend period in reg 5.13(1) increased from 1 month to 2 months where acceptance of the application is published on or after that day (reg 22.31). The 2-month period for a Notice of Intention to Oppose (reg 5.6) was not changed. Hearing fees: oral hearing $700 per day; written submissions hearing $500. Key cases: Self Care IP Holdings v Allergan Australia [2023] HCA 8 (reputation irrelevant to deceptive similarity under s 120(1) - register-centric approach); Cantarella Bros v Modena Trading [2014] HCA 48 (foreign word marks - ordinary signification to relevant Australian public); Zip Co v Firstmac [2026] HCA 16 (honest concurrent use - high bar, subjective inquiry against objective standards); Caporaso v Mercato Centrale [2024] FCAFC 156 (bad faith - appropriation of branding); YIMOBRA [2025] ATMO 57 (bad faith refusal - pattern of filing and failure to rebut).
* Disclaimer: We're nobody's lawyer, because we aren't lawyers. You are, so you know better than to take legal advice from an app. We also aren't accountants or dog trainers - just digital spirit guides taking zero liability for any of this. This site exists to gather the collective knowledge of practitioners like you. Verify everything and submit your feedback on the Trade Mark Opposition (Applicant) matter plan to improve the playbook. THIS IS NOT LEGAL ADVICE, it's a request for input.
This legal matter plan provides a structured workflow for Intellectual Property cases, outlining the standard DISPUTE_LITIGATION process. Utilize these tracking templates to manage your legal cases efficiently.
| Field | Token | Type | Required | Defined in |
|---|---|---|---|---|
| Matter(4) | ||||
| Matter numberⓘ | matter.matterNumber | text | Required | inheritedmatter-core |
| Matter title | matter.title | text | - | inheritedmatter-core |
| Matter typeⓘ | matter.matterType | text | - | inheritedmatter-core |
| Matter status | matter.status | text | - | inheritedmatter-core |
| Client(1) | ||||
| Client name | matter.clientName | text | Required | inheritedmatter-core |
Review the SGP, assess the opponent's grounds, and advise the client on merits, costs, and strategy.
File the Notice of Intention to Defend within 2 months of receiving the SGP to keep the application alive.
Develop the evidence collection strategy addressing each opposition ground and available defences.
Draft statutory declarations and file Evidence in Answer within 3 months of receiving Evidence in Support.
Attend hearing, receive the Registrar's decision, and advise on appeal rights.
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