Trade mark proceedings provide each party with a reasonable opportunity to present their case to the registrar. Generally, they concern opposition matters. Although attending such a hearing is not compulsory, where a party chooses not to participate, the Registrar may decide the matter by relying on the evidence available to her or him at the time. Below, we explore the possible avenues for appealing the Registrar’s decision.

Role and Power of the Registrar During Proceedings

Trade mark proceedings are less formal than regular court proceedings. The Registrar exercises an administrative, rather than judicial function and can act on any material that is logically probative, even where such material would not otherwise be admissible in Court.

The registrar has wide discretionary powers when conducting proceedings. In particular, the Registrar may:

  • Summon witnesses;
  • Receive written submissions;
  • Hear oral evidence;
  • Require the production of document or articles; and
  • Award costs against a party to the proceedings.

Appeals to the Federal Court or the Federal Circuit Court

You can appeal a decision, direction or determination of the trade marks Registrar to the Federal Court or the Federal Circuit Court. An appeal can be made in respect of:

  • A decision to reject a trade mark application;
  • A decision in an opposition matter;
  • A decision concerning amendments to a trade mark and/or a trade mark application; and
  • Limited decisions concerning international trade marks.

On appeal, the Courts can admit further evidence in order to:

  • Permit examination and cross-examination of witnesses;
  • Order issues of fact to be tried;
  • Affirm, reverse or vary the Registrar’s decision or direction; and
  • Give any judgment or make any order that in all the circumstances the Court thinks fit.

There is no presumption favouring the Registrar’s decision as correct (Registrar of Trade Marks v Woolworths (1999) 45 IPR 411). Ultimately, an appeal constitutes a complete re-decision on the matter.

An appeal to the Federal Court or the Federal Circuit Court must be made within twenty-one (21) days after the Registrars decision, or within such further time as permitted by the Courts.

Appeals to the Administrative Appeals Tribunal

In very limited circumstances, you can appeal particular decisions of the trade marks Registrar to the Administrative Appeals Tribunal (AAT). These include:

  • A refusal to grant an extension of time; and
  • A decision to dismiss an opposition because the Statement of Grounds and Particulars is considered to be inadequate.

As with an appeal to the Federal Court or the Federal Circuit Court, an appeal to the AAT will lead to a full re-hearing of the matter on its merits.

An appeal to the AAT must be filed within twenty-eight (28) days of the Registrar handing down his or her decision to the participants.

Reviewing the Registrars Decision

As mentioned earlier, the Registrar exercises an administrative rather than a judicial function. Consequently a decision, determination or direction of a trade marks Registrar can be reviewed under the Administrative Decisions (Judicial Review) Act 1977 (the Act). An examination under the Act does not permit a re-hearing of the matter. It is not a review of the decision based on its merits, rather it is a review of whether the Registrar has complied with the procedures. If it is found that the Registrar failed to afford a party procedural fairness, the decision will be referred to the Registrar for reconsideration.

Conclusion

Appealing a decision can be stressful, time-consuming and above all expensive. Success is not guaranteed, and even if you do successfully appeal the trademarks Registrar’s decision, you may still need to cover some or all of your out of pocket expenses. So before challenging a decision, it is important that you weigh up the costs and benefits of instituting appeal proceedings.

Questions? Get in touch on 1300 544 755.

 

Vanja Simic

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