What is the Procedure For a Trade Mark Opposition Hearing?

Summarise with: ChatGPT Claude Perplexity Microsoft Copilot

---

Table of Contents

• Before the Hearing
• At the Hearing
• Do I Have to Pay to Attend a Trade Mark Hearing?
• Can I Change My Mind About Attending?
• Can I Appeal a Decision? 
• Do I Have to Have a Hearing?
• Key Takeaways
• Frequently Asked Questions

A trade mark opposition is a formal objection to the registration of a trade mark. There are several reasons why you might oppose a trade mark. For example, you might think a trade mark application is too similar to your own. Alternatively, you may have another business trying to remove your trade mark from the Register. Both parties to an opposition may request a hearing to make oral and written submissions supporting their case. Where an oral hearing occurs, a delegate of the Registrar of Trade Marks will consider the evidence and arguments before them and decide on the opposition. This article will take you through the procedure for a trade mark opposition hearing. 

Before the Hearing

When the case manager schedules the hearing, you will have the option to attend remotely or at IP Australia’s office in Canberra. It is up to you to decide if you want to attend in person or by phone or video call.

The tribunal will give you and the other party the relevant dates for you both to make written submissions.  Usually, this is 10 business days before the hearing for the opponent and five business days before the hearing for the applicant. These written submissions will guide and assist the hearing officer during the oral arguments at the hearing. 

At the Hearing

At the opposition hearing, the hearing officer will consider the evidence and arguments of both parties. It is not an opportunity for parties to add new evidence. Instead, the hearing officer will assess the submissions and any relevant legal arguments supporting your evidence.

At the hearing, the hearing officer will begin by reading out the formalities of the matter. The opponent will provide their oral submissions first, followed by the applicant. The hearing officer will also allow each party to make final comments on any issues raised during submissions. 

Based on the evidence and submissions provided, the hearing officer will prepare a written decision that will be issued to both parties. 

Do I Have to Pay to Attend a Trade Mark Hearing?

You will have to pay several fees to attend a trade mark hearing. Firstly, the tribunal requires you to pay a fee upon requesting the hearing in addition to attending it. If the other party has requested a hearing and you would also like to participate in the hearing, you must pay an attendance fee.  The current fees relevant to hearings and opposition are as follows:

All related fees must be paid through IP Australia’s online services portal at least two days before the hearing.

Can I Change My Mind About Attending?

You may decide to withdraw from proceedings. In that case, you can withdraw at any time before a decision has been made. 

Where an opposition is resolved before the hearing occurs, it is possible that costs may still be awarded. However, this only occurs in exceptional circumstances. 

Can I Appeal a Decision? 

When issuing a decision, you will be informed of your right to seek an appeal. If an appeal is available, either party may appeal the decision made by the hearing officer. A notice of appeal must be filed within 21 days of a decision being made. 

Do I Have to Have a Hearing?

It is possible to have an opposition decided without a hearing. In these circumstances, the hearing officer will decide the matter based on the evidence they have on file, including any written submissions and will issue a written decision to both parties.

Key Takeaways

A trade mark opposition is a formal objection to the registering of a trade mark. Either party to the opposition may request a hearing to make oral and written submissions in support of their case. The procedure for a trade mark opposition hearing usually consists of:

• each party making written submissions before the hearing;
• each party making oral submissions at the hearing; and
• the hearing officer making a decision and issuing this decision in writing.

If you need help with opposing a trade mark application, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions