FOR IP PROFESSIONALS

Hearings and appeals

Once an opposition has been filed, either party can request a hearing, where they may give submissions in support of their side of the opposition.

What happens at a hearing

The registrar delegates an experienced hearing officer to decide opposition matters.

The registrar will schedule a time for your hearing. You can appear at the hearing in person, by telephone, by a video conference link or by written submissions.

Usually, each side is represented by a trade mark attorney or other legal person. The parties provide a written outline of their argument to assist the hearing officer and the other side in following the verbal submissions.

The Hearing Officer will listen to both parties but will not make a decision on the day. A written decision will be sent to both parties within three months.

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

both parties request a decision on the written record
if neither party requests a hearing or a decision on the written record, the registrar has the power to decide the matter
in both these cases, 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 the registrar of an address for service in Australia within three months of the date the notice of opposition is filed. That time may be extended on request.

Out of session hearings

We hold regular hearing sessions in Sydney and Melbourne. There are also annual hearing sessions held in Adelaide, Perth and Brisbane. Hearings may be held in Canberra at any time. If none of these options are suitable, an out of session hearing may be requested at any time. Parties wishing to take advantage of this policy will need to cover the reasonable travel, accommodation and incidental expenses of a hearing officer.

Fees

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

Withdrawal from proceedings

Either party can withdraw up to the time the hearing officer makes a decision. Even if one party withdraws from proceedings, it may still be appropriate for the remaining party to seek costs.

Costs

The registrar may award costs in amounts provided for in the Regulations (see Schedule 8 ) against any party (see section 221 and regulation 21.12 ). If an opposition proceeding is resolved before a hearing, we may decline to award costs unless there is sufficient reason to do so. Note that the costs you can claim will not always cover what you have had to spend to prosecute the opposition.

Decision

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 delegate 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 of the IP Australia Trade Mark Office since 1991 can be reviewed at the Australasian Legal Information Institute.

Appeals

Either party may file an appeal against any decision issued by a delegate. An appeal (and in some instances an application for an order for review) is usually to the Federal Court of Australia. In extension of time matters, under section 224 of the Act, an application for review of the decision may be made to the Administrative Appeals Tribunal.

Seek professional advice

The information on this website is only a guide. The opposition 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.