Legal Project Management Plan & Checklist
Purpose of this Guide: Open this plan when your client holds a registered trade mark or has prior use of a mark, and they have spotted a newly accepted trade mark application, published on IP Australia's Australian Trade Mark Search, that conflicts with their rights. Use this plan to file an opposition before the 2-month publication window closes.
Jurisdiction: Australia - Commonwealth. Proceedings are conducted administratively before the Registrar of Trade Marks at IP Australia. An appeal from the Registrar's decision lies to the Federal Court of Australia or the Federal Circuit and Family Court of Australia (Division 2) (s 56); in the Federal Court the 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 opponent side only. The corresponding plan for the applicant defending against the opposition is the Trade Mark Opposition (Applicant) plan.
The Process at a Glance: The process begins by monitoring Australian Trade Mark Search (which replaced the Official Journal of Trade Marks from 1 November 2024) for newly accepted applications that conflict with the client's marks or business. Once a conflicting application is identified, a Notice of Intention to Oppose is filed within 2 months from the day acceptance is published (reg 5.6), with a fee of $250. The period can be extended only on the grounds in reg 5.9 (an error or omission by the person, the person's agent, the Registrar or an employee, or circumstances beyond the person's control). Within 1 month from the day the Notice is filed, the opponent files the Statement of Grounds and Particulars (reg 5.7) setting out the grounds, such as deceptive similarity, prior use, or bad faith, and the facts behind them. The Registrar gives the applicant a copy, and the applicant has 2 months from that day to file a Notice of Intention to Defend (reg 5.13); if none is filed the application lapses (s 54A). The opponent then has 3 months from being given the Notice of Intention to Defend to file Evidence in Support (reg 5.14(3)). If the opponent files none, the opposition is not brought to an end: the Registrar notifies the parties and the applicant may file evidence in answer to the Statement or ask for a hearing. The applicant has 3 months for Evidence in Answer, and the opponent may file Evidence in Reply to it within 2 months (reg 5.14(4) to (6)). The matter then proceeds to a hearing before the Registrar, which can be conducted orally or in writing. The Registrar delivers a decision and awards costs under the Schedule 8 scale. Either 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 opponent's primary or strongest ground of opposition is s 60 of the Trade Marks Act 1995 (Cth) - that the applicant's mark is similar to a trade mark that was well-known in Australia at the priority date of the application, and the applicant's mark would be likely to be taken as indicating a connection with the opponent's business. This fork is evidence-intensive and requires extensive proof of the opponent's market reputation.
Use this fork when the opponent's primary or strongest ground of opposition is s 44 of the Trade Marks Act 1995 (Cth) - that the applicant's mark is substantially identical with or deceptively similar to the opponent's earlier registered mark, and both marks are used for the same or similar goods or services. This is the most commonly relied-upon opposition ground and focuses on a comparison of the marks themselves rather than market reputation.
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 cause confusion), s 44 (substantially identical or deceptively similar), s 58 (applicant not the owner - prior use ground), s 59 (no genuine intention to use), s 60 (similar to a well-known mark), s 62A (bad faith). Trade Marks Regulations 1995 (Cth) - Part 5 (opposition proceedings), Schedule 9 (fees: item 7, $250 for filing a Notice of Intention to Oppose; item 7A, on filing the Statement of Grounds and Particulars, $250 for each ground after the third and $250 for each cited trade mark after the tenth; item 6, $150 a month or part month for an extension under reg 5.9, 5.13A or 5.15; item 9C, $500 for evidence filed after the evidence period; item 15, hearing 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). Hearing fees (Schedule 9 item 15): oral $700 for each day or part of a day; written submissions only $500. If no party asks for a hearing or is heard, the fee for the Registrar's decision is $400 (item 16). Key cases: Shell Co v Esso Standard Oil (1963) 109 CLR 407 (side-by-side and imperfect recollection tests for deceptive similarity); Southern Cross v Toowoomba Foundry (1954) 91 CLR 592 (the cause-to-wonder test); 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; failure to address examination reports weighed against honesty); Caporaso v Mercato Centrale [2024] FCAFC 156 (bad faith - appropriation of branding from collapsed joint venture).
* 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 (Opponent) 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 |
Monitor Australian Trade Mark Search, identify the opposed application, and calculate the 2-month opposition window.
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Draft and file the Notice of Intention to Oppose with IP Australia within 2 months of publication to secure standing.
Draft and lodge the Statement of Grounds and Particulars identifying all statutory grounds (ss 42-62A); the Registrar gives the Applicant a copy.
Draft statutory declarations (not affidavits) and lodge Evidence in Support within 3 months of the Notice of Intention to Defend.
Review Applicant's Evidence in Answer and file Evidence in Reply (strictly limited to rebuttal) within 2 months.
Attend oral hearing or lodge written submissions and receive the Registrar's decision.