Opposition and non-use removal explained

Two stages of trademark life catch people out: the opposition period that sits between acceptance and registration, and non-use removal, which can take a registered mark off the register years later. Both are easier to handle when you understand them in advance, so here is how each works and what you can do.

The opposition period — your 2-month window

Once your application clears examination it is accepted, and IP Australia advertises it in the Official Journal of Trade Marks. From the date of advertisement there is a 2-month window during which any person can oppose your registration. This window cannot be shortened. It exists so that earlier brand owners and other interested parties have a fair chance to object before a new mark becomes registered.

Most applications are never opposed. But it does happen, and the most common opponent is the owner of an earlier brand who believes your mark is too close to theirs.

Where opposition fits in the timeline

Stage	What happens	Timing
Examination	Examiner checks the application	First report usually 3 to 4 months after filing
Acceptance	Application meets all requirements	After examination passes or objections are overcome
Advertisement	Mark published in the Official Journal	At acceptance
Opposition window	Any person may file a notice of intention to oppose	2 months from advertisement
Registration	Mark entered on the Register, protection back-dated to the filing date	If unopposed, shortly after the window closes

For the bigger picture of how these stages connect, see the trademark process step by step.

Common grounds for opposition

An opposition has to be based on grounds set out in the Trade Marks Act. The ones raised most often include:

• The opposed mark is substantially identical or deceptively similar to the opponent’s earlier mark for similar or closely related goods and services.
• The applicant is not the owner of the mark, or had no intention to use it.
• The mark is not distinctive, or its use would be likely to deceive or cause confusion.
• The application was made in bad faith.
• The opponent has a prior reputation in Australia that the mark would trade off.

How the opposition process runs

Opposition is a formal, contested proceeding before IP Australia, with set steps and strict deadlines. In broad terms it moves through these stages:

1. The opponent files a notice of intention to oppose within the 2-month window.
2. The opponent files a statement of grounds and particulars setting out their case.
3. The applicant files a notice of intention to defend.
4. Both sides file evidence in stages — evidence in support, evidence in answer, and evidence in reply.
5. The matter is decided at a hearing (written or oral) by a delegate of the Registrar, who issues a decision.

A cooling-off period is available if both sides agree, which pauses the proceeding so you can negotiate a settlement or coexistence arrangement. Many oppositions resolve this way without ever reaching a hearing.

Because the deadlines are firm and the evidence stages are technical, opposition is one area where professional help genuinely changes outcomes. If you are opposed, or you want to oppose someone else’s mark, get advice early so you do not miss a step.

Non-use removal — use it or risk losing it

A registered trademark is not “set and forget”. Registration gives you a powerful right, but the system expects that right to be backed by genuine use in trade. If a mark sits unused, someone who wants to use that brand can apply to clear it from the register.

Anyone can apply to remove your mark for non-use if it has not been genuinely used in the course of trade for a continuous 3-year period (for marks filed on or after 24 February 2019; older marks are subject to a different transitional timeframe). The application is decided by IP Australia, and the burden is generally on the registered owner to show use or a reason the mark should stay.

How to keep your registration safe

• Use the mark on the goods and services you registered it for, not just on a few of them.
• Keep dated evidence of that use — invoices, packaging, advertising, catalogues, and dated captures of your website and social media.
• Match your use to your registration. If your brand has evolved, consider whether a fresh application is needed so your registration still covers what you actually sell.
• Renew on time every 10 years. A lapsed registration is just as gone as a removed one. See how long a trademark lasts for renewal timing.

Defending a non-use action

If your mark is challenged, you can usually defend it by showing genuine use during the relevant period, or in some cases by establishing special circumstances that excused the non-use (for example, factors outside your control that prevented trade). This is where good record-keeping pays off, because the evidence you can produce decides the outcome.

Opposition vs non-use at a glance

	Opposition	Non-use removal
When it happens	Before registration, in the 2-month window after advertisement	After registration, once a mark has been unused for 3 continuous years
Who can act	Any person	Any person
What is at stake	Whether the mark becomes registered	Whether an existing registration stays on the register
Your best defence	Strong grounds, timely evidence, or a negotiated settlement	Proof of genuine use, or special circumstances

Common questions

Can the 2-month opposition window be extended or shortened? The window itself cannot be shortened. Extensions to file an opposition are possible only in limited circumstances. Plan on the standard two months.

If no one opposes, am I registered automatically? If the window closes with no opposition, your mark proceeds to registration, and protection is back-dated to your filing date.

How much use is “enough” to defeat a non-use action? There is no fixed quota, but the use must be genuine commercial use of the mark as a trademark, on the relevant goods or services, within Australia. Token or purely internal use generally will not be enough.

Someone is using a name like mine — does opposition help? Opposition only applies to a mark that has been accepted and advertised. If a similar mark is already registered, non-use removal or other action may be the better route. We can advise on which applies to your situation.

Where to go from here

Both opposition and non-use turn on evidence and deadlines, and both reward acting early. If you are dealing with an examiner’s objection rather than a third-party challenge, our guide on adverse reports and objections covers that stage. To make sure your registration is built on solid foundations in the first place, a proper trademark search and the right class selection are the best protection.

Worried about an opposition or a non-use threat? Talk to us and we will point you in the right direction.