Jessica Bell, Associate, Kalus Kenny Intelex, Melbourne, Australia
2026 begins with a number of changes to the Australian Trade Marks landscape, following the introduction of the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 (the IRHO Regulations).
The IRHO Regulations introduce a variety of procedural and technical updates to the Trade Mark Regulations 1995, including longer filing periods, partial replacement of protected international trade marks, and extended examination periods.
Divided into five comprehensive amendment schedules and two largely administrative schedules, the IRHO Regulations reflect recent changes to the Madrid Protocol administered by the World Intellectual Property Organisation (WIPO). Below, we summarise the key details of Schedules 1-5 and outline what they mean for Australian trade mark applicants and holders. Schedules 6 and 7 are primarily technical, covering minor adjustments and the timing of when each amendment takes effect – Schedules 1 and 5 took effect on 19 December 2025, while the changes set out in Schedules 2-4 and 6-7 were effective from 19 November 2025.
Schedule 1 – Increased Filing Period for Notice of Intention to Defend
Schedule 1 increases the period for filing a Notice of Intention to Defend an Opposition (NID) to two months from the previous one month period.
This means that a party now has two months to file a NID in opposition proceedings relating to:
· the registration of a trade mark;
· an application to remove a registered trade mark for non-use;
· extensions of protection to an international registration designating Australia; and
· an application to cease protection of an international registration for non-use.
This additional time is particularly significant given the Registrar’s power to treat an opposition as successful where a defence is not filed on time. Commencing on 19 December 2025, the new filing period applies to any opposition where acceptance of the trade mark, non-use application, or international registration designating Australia was published on or after that date.
Schedule 2 – Partial Replacement of Protected International Trade Mark
Schedule 2 introduces the concept of a partial replacement of a protected international trade mark (PITM). This mechanism under the Madrid Protocol allows a trade mark holder to replace an earlier registration with a later international registration for some, but not all, of the goods or services protected by a trade mark.
Previously, Australia’s regulations only allowed for a full replacement of the goods or services protected by a trade mark. As a result of this change, a later international registration will no longer automatically replace an earlier Australian trade mark in its entirety where both are owned by the same entity and cover the same goods or services.
This change is beneficial to Australian trade mark owners because it provides greater flexibility to manage their portfolios, without risking the loss of any valuable existing rights. Instead of a trade mark owner being forced into an all-or-nothing replacement, they can now update their registrations gradually, retain protection for important legacy goods or services, and better align their Australian trade mark strategy with their international registrations.
Although the change in Schedule 2 commenced on 19 November 2024, partial replacement is now available for any eligible trade mark, including those registered and protected prior to that date.
Schedule 3 – New Ground for Rejecting an International Registration Designating Australia
Schedule 3 introduces a new ground for IP Australia to reject an international registration designating Australia (IRDA).
From 19 November 2024, an IRDA may now be rejected on the basis that its protection would result in an asset being made directly or indirectly available to, or for the benefit of, any person or entity to whom assets must not be made available under the Autonomous Sanctions Act 2011 or the Charter of the United Nations Act 1945.
This means that that Australia’s trade mark system is now expressly aligned with its international sanctions regime, preventing trade mark rights from being granted in circumstances that could breach financial and trade restrictions.
Schedule 4 – Registrar’s Power to Revoke Acceptance of an IRDA
In addition to Schedule 3, Schedule 4 clarifies that where a notice of intention to revoke acceptance is issued by the IP Australia, a previously accepted IRDA will not automatically proceed to protected status. Instead, the grant of protection is paused upon issue of the notice, rather than continuing at the end of the opposition period.
This gives the applicant additional time to address the Registrar’s concerns before a final decision is made to revoke acceptance. However, importantly, an IRDA will still become protected 18 months after notification to Australia unless the Registrar notifies the International Bureau otherwise within that period.
Schedule 5 – Extended Examination Period upon request for a hearing
Effective from 19 December 2025, Schedule 5 introduces a new ground for ‘deferred acceptance’ of a trade mark, particularly where an applicant or holder requests a hearing. In these circumstances, acceptance of the trade mark application will automatically be paused, preventing it from lapsing if the examination process is not resolved in time.
Importantly, applicants will no longer need to make a separate request for deferment. The pause will end upon the earlier of the Registrar deciding to accept or reject the application following a hearing or the applicant withdrawing their request to be heard.
This change is particularly significant for applicants who request a hearing close to the acceptance deadline, as it removes the need to apply for an extension of time.
Key Takeaways
Ultimately, the IRHO Regulations reflect a refinement of existing processes while ensuring continued alignment with international trade marks regulations. These amendments provide procedural flexibility in favour of trade mark holders and applicants, but also introduce requirements to be aware of, such as the expanded grounds upon which an IRDA can be rejected.
