Legal Project Management Plan & Checklist
Purpose of this Guide: 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.
Jurisdiction: Australia - Commonwealth. The cooling-off mechanism is administered by under the . There are no further forks within this fork.
The Process at a Glance: Once both parties indicate a willingness to resolve the opposition, a joint application for a cooling-off period is submitted to IP Australia. The initial cooling-off period is 6 months, extendable by a further 6 months to a maximum of 12 months. During the cooling-off period, the entire opposition timetable is suspended and no evidence deadlines run. The parties negotiate the terms of a coexistence agreement, which may include restrictions on goods and services, geographic limitations, logo or get-up differentiation requirements, a mutual non-challenge clause, and a dispute resolution mechanism. Once agreement is reached, a formal Coexistence Deed is executed by both parties. The opponent then lodges a Notice of Withdrawal of Opposition with IP Australia. The applicant's mark proceeds through the remaining registration formalities and issues as a registered trade mark. If the cooling-off period expires without an agreement, the opposition resumes from the stage at which it was suspended.
Key Legislation and Case Law: Trade Marks Act 1995 (Cth) - s 44(3)(b) (consent by the opponent as a basis for overcoming the opposition - consent must be clear, unconditional, and unambiguous; conditions that unduly restrict the applicant's use may not constitute effective consent). Trade Marks Regulations 1995 (Cth) - Part 5 (cooling-off provisions), reg 5.15 (joint application for cooling-off - initial 6 months, one extension of up to 6 months available). Trade Marks Office Manual of Practice and Procedure (TMOMPP) - IP Australia's published guidance on cooling-off procedure. Coexistence deeds are private commercial agreements between the parties and are not lodged with or registered at IP Australia. However, any consent given to overcome the opposition should be clearly stated to IP Australia when the Notice of Withdrawal is filed. Important: a coexistence deed does not bind third parties and does not prevent future confusion in the market - practitioners should advise clients on the commercial and strategic risks of coexistence, particularly where the marks are in overlapping fields.
* 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) - Settlement / Coexistence (Cooling-Off) 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.
Submit joint request to enter a cooling-off period to suspend the opposition timeline for 6 months.
Negotiate and agree heads of terms for the coexistence arrangement.
Draft, negotiate, settle, and execute the formal trade mark coexistence deed.
Lodge formal Notice of Withdrawal of Opposition with IP Australia and confirm application proceeds to registration.
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