Legal Project Management Plan & Checklist
Purpose of this Guide: Open this plan when your client has filed a trade mark application with IP Australia that has been accepted, and a third party has now filed a Notice of Intention to Oppose. Your client is the applicant defending their right to register. Use this plan when the Statement of Grounds and Particulars has been received and the 2-month window to file a Notice of Intention to Defend is open.
Jurisdiction: Australia - Commonwealth. Proceedings are conducted before the Registrar of Trade Marks at IP Australia. If either party appeals the Registrar's decision, the appeal is heard de novo by the Federal Court of Australia within 21 days of the decision. This plan covers the applicant (respondent to the opposition) side only. The corresponding plan for the opposing party is the Trade Mark Opposition (Opponent) plan.
The Process at a Glance: Once the Statement of Grounds and Particulars is received, the applicant must file a Notice of Intention to Defend within 2 months - failure to file causes the application to lapse. The opponent then has 3 months to file their Evidence in Support, served as statutory declarations rather than affidavits. If the opponent fails to file evidence, the opposition is deemed ended. The applicant has 3 months to file Evidence in Answer, which is the key opportunity to establish defences such as honest concurrent use, consent, or prior use. The opponent may then file Evidence in Reply within 2 months, but this is strictly limited to rebutting material in the Evidence in Answer and cannot introduce new grounds. Once evidence is closed, the matter proceeds to a hearing before the Registrar, conducted either orally or in writing. The Registrar issues a decision and costs are awarded under the substantially increased Schedule 8 scale effective 1 October 2024. An unsuccessful party may appeal to the Federal Court within 21 days.
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.
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 confuse), s 44 (substantially identical or deceptively similar marks), s 44(3)(a) (defence of honest concurrent use), s 44(3)(b) (defence of consent), s 44(4) (defence of prior use), s 58 (applicant not the owner - prior use ground), s 59 (no genuine intention to use), s 60 (reputation of earlier mark), s 62A (bad faith). Trade Marks Regulations 1995 (Cth) - Part 5 (opposition proceedings), regs 5.8-5.16 (evidence and defence rounds), Schedule 7 (fees), 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; Notice of Intention to Oppose period increased from 1 month to 2 months. Hearing fees: oral hearing $700 per day; written submissions hearing $500. Key cases: 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); Caporaso v Mercato Centrale [2024] FCAFC 156 (bad faith - appropriation of branding); YIMOBRA [2025] ATMO 57 (bad faith refusal - pattern of filing and failure to rebut).
* 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.