FOR IP PROFESSIONALS

Hearings and appeals

Once an opposition has been filed and the evidence stages have progressed, either party can request a hearing where they may make submissions in support of their side of the opposition. A hearing can be oral or by written submissions.

What happens at an oral hearing

We will schedule a time for the hearing. You can appear at the hearing in person or by written submissions. If the hearing is being held at our office in Canberra you can also appear at the hearing by telephone or video conference link.

Usually each party is represented by a trade mark attorney or other legal person. Before the hearing, the parties must provide a written summary of their submissions to assist the Hearing Officer and the other party to follow the verbal submissions.

The Hearing Officer will listen to both parties. A written decision will be sent to the parties within 3 months of the hearing.

It is possible to have an opposition decided without an oral hearing if:

both parties request to be heard by way of written submissions
neither party requests a hearing.

In these circumstances, we have the power to decide the matter and a written decision will be sent to both parties.

Please note

The holder of an International Registration Designating Australia (IRDA) will not have an opportunity to be heard unless the holder has notified us of an address for service in Australia.

Out of session hearings

Hearings are held throughout the year in Canberra. Hearing sessions are also held in Sydney, Melbourne, Adelaide, Perth and Brisbane. There is a schedule of hearing dates for these cities.

If none of these options are suitable an out of session hearing may be requested. In an out of session hearing, parties are required to cover the reasonable travel, accommodation and incidental expenses of the Hearing Officer.

Fees

Fees must be paid when you request a hearing. If you do not request a hearing but would like to participate in a hearing requested by the other party, you must pay the fee before you can be heard.

Withdrawal from proceedings

Either party can withdraw from proceedings at any time before the Hearing Officer has made a decision. Even if a party withdraws, it may still be appropriate for the remaining party to seek costs.

Costs

We may award costs against any party in amounts provided for in Schedule 8 of the Trade Marks Regulations 1995. The costs you can claim will not always cover what you have had to spend to prosecute the opposition.

If an opposition proceeding is resolved before a hearing, an award of costs may be declined.

Decisions

The Hearing Officer will not decide the opposition at the hearing. The decision will usually be reserved, and after consideration of the submissions and evidence, the Hearing Officer will send a written decision and reasons to both parties. This will include a decision on any application for an award of costs.

Past decisions can be accessed at the website of the Australasian Legal Information Institute.

Appeals

Either party may file an appeal against any decision issued by our delegate. An appeal (and in some instances an application for an order for review) may be made to the Federal Court or the Federal Magistrates Court. In extension of time matters that fall under section 224 of the Trade Marks Act 1995, an application for review of the decision may be made to the Administrative Appeals Tribunal.

Seek professional advice

The opposition and hearings process can be lengthy, complex and costly. If you are considering filing or defending an opposition, it may be in your interests to seek the assistance of an IP Professional.