Legal Project Management Plan & Checklist
Purpose of this Guide: Welcome to the practitioner roadmap for managing a trade mark opposition from the opponent perspective in Australia. Designed explicitly for intellectual property solicitors and trade mark attorneys, this guide covers the full lifecycle of an opposition - from monitoring the Australian Official Journal of Trade Marks through to hearing and 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); , Part 5 (Opposition Proceedings), as amended by the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 (effective 19 December 2025) and Schedule 7/8 fee and cost increases (effective 1 October 2024); Trade Marks Office Manual of Practice and Procedure (TMOMPP); Rules 2011 (Cth), Division 34.3 (Trade Marks Appeals).
Key Case Law: Shell Co v Esso Standard Oil (1963) 109 CLR 407 (side-by-side and imperfect recollection tests); Southern Cross v Toowoomba Foundry (1954) 91 CLR 592 ('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, subjective inquiry against objective standards, failure to address examination reports weighed against honesty); Caporaso v Mercato Centrale [2024] FCAFC 156 (bad faith - appropriation of branding from collapsed joint venture). Additional procedural resources can be found on the Australia Government Portal and the Federal Register of Legislation.
Process at a Glance: (1) Monitor the Official Journal for publication of the opposed mark. (2) Lodge a Notice of Intention to Oppose within 2 months of publication ($250 fee per mark). (3) File Statement of Grounds and Particulars (SGP) within 1 month of the Notice, identifying statutory grounds such as: • s 44 (deceptive similarity) • s 60 (reputation) • s 58 (prior use) • s 62A (bad faith) • or other available grounds. First 3 grounds are included in the fee; additional grounds cost $250 each. (4) Applicant files Notice of Intention to Defend within 2 months of SGP service (increased from 1 month effective 19 December 2025). (5) Opponent files Evidence in Support (statutory declarations, not affidavits) within 3 months of the Defence - failure to file deemed to end the opposition. (6) Applicant files Evidence in Answer within 3 months. (7) Opponent files Evidence in Reply (strictly limited to rebuttal) within 2 months. (8) Hearing - oral ($700/day) or written ($500). Costs follow the event per Schedule 8 (substantially increased from 1 October 2024). (9) Appeal to Federal Court within 21 days of the Registrar's decision. 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 (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 IP_TRADEMARK cases, outlining the standard DISPUTE_LITIGATION process. Utilize these tracking templates to manage your legal cases efficiently.
Monitor the Australian Official Journal of Trade Marks, identify the opposed application, and calculate the 2-month opposition window.
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.
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 - establishes the side-by-side test and imperfect recollection test for deceptive similarity.
Self Care IP Holdings v Allergan Australia [2023] HCA 8 - reputation is NOT a relevant factor in assessing deceptive similarity. The analysis must be register-centric, based on fair and normal use of the marks without reference to external reputation.
Cantarella Bros v Modena Trading [2014] HCA 48 - for foreign word marks, the test is 'ordinary signification' to the relevant Australian public, not the dictionary meaning in the language of origin.
Draft and dispatch formal correspondence addressing the procedural requirements at this stage, including any required notices, requests for information, or proposals for resolution.
Draft and file the Notice of Intention to Oppose with IP Australia within 2 months of publication to secure standing.
Coordinate the collection and review of all financial documentation required for disclosure, including statements, valuations, and supporting schedules as mandated by the rules.
Draft and lodge the Statement of Grounds and Particulars identifying all statutory grounds (ss 42-62A) and serve on the Applicant.
Assess the strategic considerations for interim applications, prepare supporting evidence, and draft the necessary documentation for urgent or time-sensitive relief sought.
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.
Verify all prerequisite documentation has been obtained, cross-reference against the statutory requirements for this matter type, and confirm compliance with practice direction protocols.
NID period increased to 2 months (from 1 month) effective 19 December 2025 - Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025.