Oppositions Against Registration











Welcome to Australian Trade Mark Opposition Law.

The purpose of this site is to provide quick, reliable answers to practitioners working with trade mark oppositions and appeals.  Therefore the aim is to keep excessive academic discussion to a minimum and make good use of relevant and helpful citation to authorities. 

This site is presently under development and new sections will be added over the coming months.  If the section you require is not yet published please return later or email the editor on sykes@vicbar.com.au.

The pages relevant to the new 'Raising the Bar' amendments to the Trade Marks Act 1995 and Trade Marks Regulations 1995 are in the process of being updated. Chapter [1] Notice of Opposition has now been updated. A special thanks goes to Samin Raihan, B.Sc LLB (Hons.), for his work and assistance with this task.

CPE/CPD Presentations

Over the coming months we will be posting downloadable CPE/CPD Presentations. We aim to post at least one presentation every three months. If you would like to be notified when new presentations are posted please email sykes@vicbar.com.au to request to be included on the mailing list.

Our first presentation below is a Trade Mark Opposition Law Update focused on recent developments and cases on inherent distinctiveness under s.41 of the Trade Marks Act 1995.

Other Online Resources

Below is a series of other online resources from other publishers which are useful for professionals involved in trade mark opposition proceedings.

List of Recent Trade Marks Office Decisions (Austlii)
A list of recent Trade Marks Office decisions in relation to trade mark oppositions to registration and applications for removal for non-use.

List of Recent Federal Court Decisions (Austlii)
A list of recent Federal Court decisions on all subject matters, including appeals from trade mark opposition decisions of the Trade Marks Office.

The Trade Marks Act 1995 (Cth) (Austlii)
An online version of the Trade Marks Act 1995.

The Trade Marks Regulations 1995 (Cth) (Austlii)
An online version of the Trade Marks Regulations 1995

ATMOSS (IP Australia)
The Australian Trade Marks Office database.

Search for Australian Surnames (IP Australia)
Provides a search tool which can indicate how common a surname is for the purposes of oppositions under s.41 of the Trade Marks Act.

Search for International Nonproprietary Names for Pharmaceutical Substances (IP Australia)
Provides a search tool which can indicate whether a trade mark contains an International Nonproprietary Name for the purposes of oppositions under s.41 or s.43 of the Trade Marks Act.

Trade Marks Office Manual of Practice and Procedure (IP Australia)
The manual used by trade mark examiners and hearing officers.

IP Wars (Warwick Rothnie)
A detailed and regularly updated blog on various current issues in intellectual property law.  This site is authored by the respected IP Barrister, Warwick Rothnie.  It contains updates on new intellectual property cases and reforms (including on trade marks) that are invaluable for trade mark attorneys and other IP professionals.