Legal Project Management Plan & Checklist
Purpose of this Guide: Welcome to the practitioner roadmap for defending a trade mark application under opposition from the applicant's perspective in Australia. Designed explicitly for trade mark defence solicitors and attorneys, this guide covers the full lifecycle of defending an opposition - from receipt of the Statement of Grounds and Particulars through to hearing, decision, and potential appeal. Additional procedural resources can be found on the Australia Government Portal and the Federal Register of Legislation.
Jurisdiction: This guide applies to administrative proceedings before the Registrar of Trade Marks at IP Australia (a Commonwealth agency), with appeal rights to the Federal Court of Australia.
Governing Legislation: Trade Marks Act 1995 (Cth), Part 5 (Opposition to Registration), ss 42-62A (Grounds of opposition), s 44(3)-(4) (Defences - honest concurrent use, consent, prior use); , Part 5 (Opposition Proceedings), as amended by the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 (effective 19 December 2025 - NID period increased from 1 to 2 months), regs 5.8-5.16 (Defence and evidence rounds), Schedule 7 (Fees), Schedule 8 (Costs - substantially increased from 1 October 2024); Statutory Declarations Act 1959 (Cth) (evidence format); Rules 2011 (Cth), Division 34.3 (Trade Marks Appeals).
Key Case Law: Self Care IP Holdings v Allergan Australia [2023] HCA 8 (reputation irrelevant to deceptive similarity); Zip Co v Firstmac [2026] HCA 16 (honest concurrent use - HIGH BAR, subjective inquiry against objective standards); Cantarella Bros v Modena Trading [2014] HCA 48 (foreign word marks - ordinary signification test); Caporaso v Mercato Centrale [2024] FCAFC 156 (bad faith - appropriation of branding); YIMOBRA [2025] ATMO 57 (bad faith refusal - pattern of filing, opponent's prior use, failure to rebut). Additional procedural resources can be found on the Australia Government Portal and the Federal Register of Legislation.
Process at a Glance: (1) Receive the Statement of Grounds and Particulars (SGP) identifying the opponent's grounds of opposition. (2) File a Notice of Intention to Defend within 2 months of receiving the SGP (reg 5.8, as amended effective 19 December 2025 - increased from 1 month) - CRITICAL: failure to file results in the application lapsing. (3) Assess the grounds - the opponent bears the burden of proof on each ground. (4) Receive the opponent's Evidence in Support (statutory declarations, not affidavits) within 3 months of the Defence. (5) File Evidence in Answer within 3 months of receiving Evidence in Support - include: • evidence of honest concurrent use (s 44(3)(a)) • consent (s 44(3)(b)) • prior use (s 44(4)) • or rebuttal of the opponent's grounds. (6) Receive Evidence in Reply (strictly limited to rebuttal) within 2 months. (7) Attend hearing - oral ($700/day) or written ($500). Costs follow the event per Schedule 8 (substantially increased from 1 October 2024). (8) If unsuccessful, appeal to the Federal Court within 21 days (hearing de novo). Additional forms are accessible via the Australia Government Portal.
* 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 IP_TRADEMARK cases, outlining the standard DISPUTE_LITIGATION process. Utilize these tracking templates to manage your legal cases efficiently.
Review the SGP, assess the opponent's grounds, and advise the client on merits, costs, and strategy.
Verify all prerequisite documentation has been obtained, cross-reference against the statutory requirements for this matter type, and confirm compliance with practice direction protocols.
Prepare the relevant forms and supporting materials required under the applicable legislation, ensuring all mandatory fields are completed and all attachments are properly certified.
Schedule 8 costs scale (from 1 October 2024) - substantially increased. Adverse costs risk must be factored into the costs-benefit analysis.
File the Notice of Intention to Defend within 2 months of receiving the SGP to keep the application alive.
Draft and dispatch formal correspondence addressing the procedural requirements at this stage, including any required notices, requests for information, or proposals for resolution.
Develop the evidence collection strategy addressing each opposition ground and available defences.
Conduct a thorough review of all filed materials to ensure compliance with court requirements, verify service obligations have been met, and prepare for the next procedural milestone.
NID period increased to 2 months (from 1 month) effective 19 December 2025 - Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025.
Coordinate the collection and review of all financial documentation required for disclosure, including statements, valuations, and supporting schedules as mandated by the rules.
Assess the strategic considerations for interim applications, prepare supporting evidence, and draft the necessary documentation for urgent or time-sensitive relief sought.
CRITICAL: Per Zip Co v Firstmac [2026] HCA 16 (High Court, decided 13 May 2026), the honest concurrent use defence sets a HIGH BAR - honesty is a positive onus on the party claiming the defence, assessed as a subjective inquiry against objective standards of ordinary decent people.
Failure to address or respond to adverse examination reports from IP Australia weighed HEAVILY against honesty.