Either party in an opposition may request a hearing where they can make oral or written submission in support of their case. The Hearing Officer 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 at our Canberra office. You may attend via telephone, video conference or in person. Parties can be represented by a trade marks attorney or other representative, or may choose to be be self-represented. Before the scheduled hearing date, the Hearing Officer will write to the parties and issue directions for filing written submissions. This is to assist the Hearing Officer and the other party to follow the verbal submissions on the day of 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 Hearing Officer.
The Hearing Officer will listen to both parties (providing relevant fees have been paid). After considering the submissions and evidence, the Hearing Officer will within three months of the hearing date send a written decision to the parties.
It's possible to have an opposition decided without an oral hearing. In these circumstances, the Hearing Officer 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.
Please note: The holder of an International Registration Designating Australia (IRDA) will not have an opportunity to be heard unless the holder has provided us with an address for service in Australia.
The fee is payable upon requesting a hearing. If the hearing is in relation to more than one trade mark you must pay a fee 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 also pay the attendance fee.
If you're not attending the hearing and wish to rely on written submissions only, a fee of $100 for each trade mark is payable before the commencement of the hearing. All hearing 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 may still be appropriate for the remaining party to seek 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 spent to prosecute the opposition.
If an opposition proceeding is resolved before a hearing, an award of costs may be declined.
The Hearing Officer will not 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.
Past decisions can be accessed at the website of the Australasian Legal Information Institute.
Either party may file an appeal against any decision issued by the Registrar’s delegate. An appeal (and in some instances an application for an order for review) may be made to the Federal Court or the Circuit Court within 21 days of the decision date. 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.