What To Do If Someone Opposes Your Trade Mark

Mia runs a small coffee brand in Brisbane called Riverbend Roast. After months of packaging design, website work and wholesale chats, her trade mark application is accepted by IP Australia. Then, just when registration feels close, she receives a notice saying another business has opposed it.

If this has happened to you, it can feel frustrating and a bit personal. But a trade mark opposition doesn't automatically mean you've lost your brand name, and it doesn't always mean you need to rebrand overnight.

What matters now is moving quickly, understanding the deadlines, and choosing the path that best protects your business. A calm plan can often make the difference between keeping your application alive and accidentally letting it lapse.

Someone Opposed My Trade Mark - What Should I Do First?

You should first diarise your IP Australia deadline, save every document, and get a clear view of what the opponent is actually claiming.

A trade mark opposition in Australia usually happens after IP Australia has examined and accepted your application, but before registration. The opponent is asking IP Australia not to register your trade mark, usually because they say it conflicts with their earlier trade mark rights or shouldn't have been accepted.

Start with these steps:

1. Find the Statement of Grounds and Particulars: This is the document that tells you the legal grounds the opponent is relying on and the facts they say support those grounds.
2. Check the date you received it: You generally have two months from the day you're given the Statement of Grounds and Particulars to file a Notice of Intention to Defend.
3. Don't ignore it: If you miss the defence deadline, your application will generally lapse and the opposition is effectively over.
4. Keep your records together: Save launch dates, sales records, invoices, packaging, website screenshots, social media posts and customer enquiries.
5. Avoid emotional replies: Don't send a long angry email to the opponent. Anything you write may affect negotiations later.

For acceptances published on or after 19 December 2025, the current period for filing a Notice of Intention to Defend is generally two months from the day you're given the Statement of Grounds and Particulars. If the acceptance was published before 19 December 2025, the older one month period may apply, so check the IP Australia notice and deadline carefully.

The first few weeks can move faster than you expect. Even if you think the opposition is weak, you still need to respond properly if you want to keep the application alive.

How Does An IP Australia Trade Mark Opposition Work?

An IP Australia trade mark opposition is a formal process under the Trade Marks Act 1995 and Trade Marks Regulations 1995 where another party challenges your accepted application before it becomes registered.

The usual process looks like this:

1. Your application is accepted: IP Australia advertises the acceptance.
2. The opponent files a Notice of Intention to Oppose: This must usually be filed within two months of the acceptance being advertised.
3. The opponent files the Statement of Grounds and Particulars: This is usually due within one month after the Notice of Intention to Oppose is filed.
4. You file a Notice of Intention to Defend: This is generally due within two months after you're given the Statement of Grounds and Particulars, if the current period applies.
5. Evidence rounds begin: If the matter continues, the opponent files evidence in support, you file evidence in answer, and the opponent may file evidence in reply.
6. The matter may go to a hearing: IP Australia can decide the opposition after written submissions or an oral hearing.

The standard evidence timing is also tight. The opponent usually has three months to file evidence in support. You usually then have three months to file evidence in answer. The opponent usually has two months for evidence in reply.

Extensions can be available in limited situations, but you shouldn't assume you'll get one. IP Australia expects parties to meet deadlines unless there's a proper reason.

Why Would Someone Oppose Your Trade Mark?

Someone may oppose your trade mark because they think your brand is too close to theirs, because they say you don't really own it, or because they believe the application was filed for the wrong reasons.

Common opposition grounds include:

• Similar earlier trade marks: The opponent says your mark is substantially identical or deceptively similar to their earlier mark for similar goods or services.
• Prior reputation: The opponent says their brand already had a reputation in Australia before your priority date, which is often your filing date, and your mark is likely to cause confusion.
• No intention to use: The opponent says you applied without a genuine intention to use, authorise use of, or assign the mark.
• Not the true owner: The opponent says they, not you, are the owner of the trade mark.
• Bad faith: The opponent says the application was filed dishonestly or for an improper commercial purpose.
• Other legal issues: For example, the mark is said to be misleading, prohibited or otherwise not registrable.

Not every claim is strong. Sometimes an opponent casts the net widely and includes several grounds even though only one or two are realistic.

Your job is to work out what risk actually exists. A trade mark opposition lawyer can help you separate serious issues from weak points, which is useful before you spend time and money fighting every allegation.

Should You Fight, Negotiate Or Rebrand?

It depends on the strength of your application, the commercial value of the brand, and whether there's a practical compromise that lets both businesses move forward.

There are usually three main paths.

Option 1: Defend The Opposition

This makes sense if your mark is commercially valuable and you have a good argument that it should be registered. For example, your mark may look and sound different enough, cover different goods or services, or have been used honestly for some time.

Defending can protect the investment you've already made in your brand. It can also stop a competitor from pushing you away from a name you're entitled to use.

Option 2: Negotiate A Settlement

Negotiation is common in trade mark opposition matters. The result might be a trade mark coexistence agreement, a narrowed trade mark specification, a change to your logo, or a staged transition to a new brand.

IP Australia also allows a cooling-off period if both parties request it. This is usually six months and can often be extended for a further six months. It pauses the opposition timetable while you negotiate.

Option 3: Rebrand Or Withdraw

Rebranding may be the right call if the opposition is strong and your brand is still early-stage. It can be frustrating, but sometimes changing direction early is cheaper than building more goodwill in a name you may not be able to protect.

Before withdrawing, check whether the opponent is also asking you to stop using the name. Trade mark registration and day-to-day brand use are related, but they aren't always the same issue.

How Do You Respond To A Trade Mark Opposition?

You respond by filing a Notice of Intention to Defend by the deadline, then preparing your evidence and strategy for the opposition process.

Here is a practical pathway you can follow.

1. Confirm the exact deadline: Work from the date IP Australia gave you the Statement of Grounds and Particulars. The current period is generally two months, but an older one month period may apply if the acceptance was published before 19 December 2025. If you're unsure, check the IP Australia correspondence and online record.
2. File the Notice of Intention to Defend: This keeps your application alive. Filing it doesn't mean you must fight all the way to a hearing.
3. Review each ground of opposition: Ask whether the opponent has evidence for each claim, and whether you have a clear answer.
4. Assess your commercial position: Look at packaging, signage, domain names, stock, customer recognition, investors, franchise plans and future product lines.
5. Consider early negotiation: If there's room to narrow your goods or services, adjust branding, or agree on market boundaries, raise this early.
6. Prepare evidence early: Don't wait until your evidence deadline. Some records take time to find, especially if you need screenshots, supplier confirmations or accountant reports.

Say Mia receives the opponent's Statement of Grounds and Particulars on 12 April. If the current two month period applies, her Notice of Intention to Defend is due by 12 June. She should still confirm the exact deadline in IP Australia correspondence. If she wants to negotiate, she might file the defence first to preserve her position, then ask the opponent to agree to a cooling-off period before evidence deadlines start biting.

If the cooling-off period is accepted, IP Australia will confirm the adjusted timetable. That breathing room can be useful, but it shouldn't be treated as a break from strategy. Use it to work towards a signed agreement or a clear decision to continue.

What Evidence Will Help You Defend Your Trade Mark?

The best evidence is organised, dated material that shows how your trade mark was chosen, used, promoted and recognised in the Australian market.

The evidence you need depends on the grounds raised. For example, if the opponent says customers will be confused, evidence about your different branding, market, customers and sales channels may help. If they say they had reputation first, you may need to test whether their evidence actually shows Australian reputation before your priority date, which is often your filing date.

Useful records can include:

• First use material: Launch announcements, website screenshots, invoices, order confirmations and dated packaging files.
• Sales and customer records: Revenue by product, customer locations, wholesale accounts and repeat orders.
• Marketing evidence: Advertising spend, social media analytics, email campaigns, media mentions and influencer agreements.
• Brand development documents: Design briefs, logo drafts, naming notes and domain name registration records.
• Market difference evidence: Proof that your goods, services, price point, customers or distribution channels differ from the opponent's.
• Confusion evidence: Records showing whether you have, or haven't, received misdirected enquiries or complaints.

Keep evidence in a simple folder by date. Screenshots should show the URL and date where possible. If you're relying on social media posts, save the post, the date, engagement data and the account details.

Evidence in trade mark oppositions is usually filed in a formal way, often through declarations. This is where tailored legal help is valuable, because a pile of documents isn't the same as persuasive evidence.

What Should A Settlement Or Coexistence Agreement Include?

A settlement or coexistence agreement should clearly say how each party can use their brand, what changes will be made, and what happens to the opposition.

These agreements can be very practical. For example, two businesses might agree to use different logos, operate in different product categories, avoid certain words in advertising, or limit future Australian or international trade mark applications.

Here is a simple outline of what you may need to cover. This isn't a finished legal document, and it should be tailored before you use it.

1. Parties: List the correct legal names, including ACNs or ABNs where relevant.
2. Background: Identify the trade mark application, the opposition, and each party's relevant brands.
3. Permitted use: Explain exactly how you can use your mark, including words, logos, colours, products, services and territories if agreed.
4. Restrictions: Set out anything either party won't do, such as using a similar logo or expanding into a particular category.
5. Trade mark filings: State whether the trade mark application will continue, be amended, or be withdrawn, and whether future filings need consent.
6. Opposition steps: Say when the opponent will withdraw the opposition or agree to a cooling-off extension.
7. Transition period: If changes are needed, include dates for packaging, websites, signage and stock run-off.
8. Confidentiality: Cover whether the agreement and negotiations stay private.
9. Breach and consequences: Explain what happens if either party doesn't follow the agreement.
10. Costs: State whether each party pays its own costs or whether another arrangement applies.

Be careful with informal email deals. If the wording is vague, you may later disagree about what was actually allowed. A well-drafted agreement can resolve the opposition and reduce the chance of another dispute when your business grows.

When Should You Get Urgent Legal Help?

You should get urgent legal help if a deadline is close, the opponent has a strong earlier brand, or the opposition could affect a launch, investment, franchise plan or major customer deal.

Some situations need fast attention:

• Your Notice of Intention to Defend is due soon: Missing this can end the application.
• You have received a cease and desist letter as well: The issue may be broader than the trade mark application.
• The opponent owns a very similar registered mark: You need to assess both registration prospects and use risk.
• You have already invested heavily: Packaging, signage, stock, websites and advertising can make rebrand decisions more complex.
• You're negotiating investment or sale terms: Unresolved IP disputes can affect due diligence.
• You're considering a settlement: Small wording changes can create big practical differences later.

A lawyer can help you decide whether to defend, negotiate, narrow the application or rebrand. They can also help you prepare evidence, manage IP Australia deadlines and avoid saying something in negotiations that weakens your position.

The right approach depends on your facts. A cafe name used locally for six weeks is a different risk profile from a national ecommerce brand with three years of sales and a pending capital raise.

Key Takeaways

• A trade mark opposition doesn't automatically mean your application is lost, but you need to act quickly.
• For current oppositions, you generally have two months from the day you're given the Statement of Grounds and Particulars to file a Notice of Intention to Defend.
• If the acceptance was published before 19 December 2025, the older one month period may apply, so check the IP Australia notice and deadline carefully.
• Oppositions can often be resolved through negotiation, coexistence agreements or narrowing the trade mark application.
• Strong evidence is dated, organised and connected to the legal grounds being argued.
• A cooling-off period can pause the IP Australia timetable while both sides negotiate, but you should use that time carefully.

If you'd like help with responding to a trade mark opposition, negotiating a settlement or coexistence agreement, or preparing your trade mark evidence and strategy, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no-obligations chat.