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 advertised trade mark application in the Australian Official Journal of Trade Marks 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. Appeals against the Registrar's decision are heard de novo by the Federal Court of Australia within 21 days. 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 the Australian Official Journal of Trade Marks 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 lodged within 2 months of advertisement, accompanied by a fee of $250 per mark. Within 1 month of the Notice, the opponent files the Statement of Grounds and Particulars specifying the statutory grounds of opposition, such as deceptive similarity, prior use, or bad faith. If the applicant files a Notice of Intention to Defend within 2 months, the evidence phase begins. The opponent files Evidence in Support within 3 months - this is critical, as failure to file is deemed to end the opposition. The applicant then files Evidence in Answer and the opponent may file Evidence in Reply within 2 months, strictly limited to rebuttal of the Answer. 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 within 21 days.
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 7 (fees: $250 per mark for Notice of Intention to Oppose; first 3 grounds included, additional grounds $250 each), Schedule 8 (costs scale - substantially increased from 1 October 2024). Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 effective 19 December 2025 - Notice of Intention to Defend period increased from 1 month to 2 months. Hearing fees: oral $700 per day; written $500. 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 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.
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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) and serve on the Applicant.
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.