IP Australia recently released for consultation an exposure draft of the proposed Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 (the amending regulations) to amend the Trade Marks Regulations 1995.  

The consultation period was a short two weeks suggesting perhaps that the proposed amendments were minor or insignificant in nature.  However, there are a couple of proposals which may have significant implications.  

Minor and welcome amendments  

More time to defend an opposition 

The time to file the Notice of Intention to Defend an opposition or non-use action will be extended from one month to two months from the date the trade mark applicant/owner receives the Statement of Grounds and Particulars. 

Automatic deferment when applicant requested a hearing 

The amending regulations provide for the Registrar to defer the time for acceptance of an application for registration on his/her own initiative when the applicant has made a request to the Registrar to be heard in relation to the application.    

Full and now partial replacement 

The current regulations provide only for full replacement of an Australian registration by a protected international trade mark.   The amending regulations propose partial replacement in accordance with amendments to the Madrid Regulations Rule 21, which have been effective from 1 November 2021. 

New power for Registrar to revoke acceptance of an International Registration designating Australia 

The amending regulations propose that the Registrar may revoke the acceptance of an International Registration Designating Australia (IRDA) before the IRDA becomes a protected international trade mark. This can occur if the Registrar becomes satisfied that the IRDA should not have been accepted and it is reasonable to revoke, taking into account all the circumstances. When acceptance is revoked, an IRDA is taken never to have been accepted. The power to revoke registration of a national Australian application already exists.   

Where the Registrar considers that an IRDA’s acceptance should possibly be revoked, the Registrar will notify a holder of an IRDA of their intention to revoke the acceptance of the IRDA. This means that once the Registrar notifies that they may revoke acceptance, the IRDA will not automatically become protected while the Registrar considers their decision.  

Significant but not wholly unwelcome amendments 

Refusal of IRDA for contravention of Australia’s sanction laws 

The amending regulations propose a new ground of refusal of protection of an IRDA, if protecting the trade mark would contravene the Autonomous Sanctions Act 2011, the Charter of the United Nations Act 1945, or their regulations (the sanctions laws).  

By providing a ground for rejecting an IRDA a provisional refusal can be issued, which in turn ensures that the IRDA is not protected automatically. A similar power is not needed for national Australian applications as the Registrar must register these applications only when they have been positively accepted for registration and have not been opposed (or if an opposition was unsuccessful). In these cases, the effect of the sanctions laws is that the Registrar has no power to register a trade mark where such registration would contravene those sanctions laws.  

Dismissal of oppositions where initiating party fails to request and pay for hearing 

In opposition and non-use actions the Registrar must give both parties an opportunity to be heard.  To be heard and obtain a decision in the proceedings at least one party must request a hearing and pay the relevant fee.  However, there is currently no time limit or obligation to do so. Currently, in the absence of such a request the proceeding lingers without a decision.   

While the Registrar may hold a hearing or decide the matter without a hearing on his/her own initiative, if the hearing fee is not paid the Registrar cannot make a decision.  Therefore, the Registrar lacks the power to end the proceedings which will remain in ‘limbo’.  

The amending regulations propose that the Registrar may dismiss the opposition or non-use action if the initiating party (the opponent in an opposition to registration or to protection, and the non-use applicant in non-use removal or cessation) does not request a hearing and pay the relevant fee within the three months of notification that the proceedings is in order for a hearing.    

If the initiating party does not request a hearing and pay the fee, the default outcome will be the state of the Register of Trade Marks had the party not commenced the proceedings. 

This means that the proceedings will fail and the opposed application will proceed to registration, or the registered trade mark will remain on the Register as the case may be.  It is proposed that the initiating party can appeal to the Administrative Review Authority for review of the decision to dismiss the proceedings. 

It is important to note that this amendment will apply to existing oppositions and non-use actions.   

What happens next?

Following the review of any submissions on the proposals, the amending regulations will proceed through the usual legislative process.   

If you have any feedback on these proposals, or any other aspect of Australian IP laws or IP Australia practice please let us know. We are strong advocates for users of Australian and New Zealand IP systems, and follow changes and improvements closely. 

Read more about the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025.

Elena Szentiványi - September 2025