Either party in an opposition may request a hearing where they can make oral or written submission in support of their case. A delegate of the Registrar of Trade Marks (Registrar) will consider the evidence and/or submissions and issue a decision on the opposition.
What happens at an oral hearing
The matter will be scheduled to be heard either online or at our Canberra office. You may attend via telephone, video conference or in person. Parties can be represented by a trade mark attorney or another representative, or may choose to be self-represented. Before the scheduled hearing date, parties who plan to attend must file a written outline of their main arguments. This is to assist the delegate and the other parties to the opposition to prepare for the hearing.
Please be aware that a hearing is not a form of mediation but a forum in which to present your case to the delegate.
The delegate will consider the arguments of both parties provided relevant fees have been paid. After considering the submissions and evidence, the delegate will issue a written decision to the parties.
It is possible to have an opposition decided without an oral hearing, provided relevant fees have been paid. In these circumstances, the delegate will decide the matter based on the evidence that is on file, including any written submissions, and will issue a written decision to both parties.
A fee is payable upon requesting a hearing, and for attending the hearing. If the hearing is in relation to more than one trade mark you must pay fees for each trade mark. If the other party has requested to be heard and you would also like to participate in the hearing, you must pay an attendance fee. The fee for attendance by video or telephone is lower than to attend in person. The fee to provide written submissions only is lower still. If no party to an opposition wants to be heard, there is a fee for issuing a decision.
All opposition related fees must be paid through our online services portal at least two days before the hearing.
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 is possible to seek an award of costs.
We may award costs against any party to proceedings before the Registrar 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 spent to prosecute the opposition.
If an opposition proceeding is resolved before a hearing, an award of costs can still be made in exceptional circumstances or if the parties agree to an award.
The Hearing Officer will rarely make a decision at the hearing. The decision will usually be reserved, and after considering the evidence and submissions the Hearing Officer will issue a written decision and reasons to both parties. This will include a decision on any application for an award of costs.
Either party may appeal (or in some instances seek a review of) a decision issued by the delegate. For most matters, notice of appeal may be filed in the Federal Court or the Federal Circuit Court within 21 days of the delegate's decision. For some matters, an application for review of the decision may be made to the Administrative Appeals Tribunal within 28 days of the delegate’s decision. In either case, when issuing the decision the delegate will inform each party of their right to appeal or seek review. Where neither of those options are available, it is usually possible to seek judicial review of an administrative decision in a competent court.
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.