52.1. What is a decision?

Opposition to registration of a trade mark, opposition to removal of a trade mark from the Register for non- use, opposition to procedural matters under sections 65A, 83A and 224, and any of the ex parte matters discussed below can all result in a decision made by the Registrar or the Registrar’s delegate. The decision is an administrative action and is generally made once it is communicated to the persons affected by it. This will generally be in writing although may occasionally be communicated to the parties at the hearing. Rule 34.24(1) (of Chapter 3 Part 34 Division 34.3 “Intellectual Property”) of the Federal Court Rules, refers simply to “the date of the decision” and thus envisages either a written decision or a decision which is given verbally. Under Rule 34.21, “decision” also includes a direction or determination of the Registrar.

The term "decision" is sometimes loosely used to refer to documents produced by the Registrar, or a delegate of the Registrar, in the course of making a decision. These documents, in fact, give not just the decision but an account of the arguments presented and of the reasoning by which the decision was reached. They therefore provide a record of the reasons and, in the event of an appeal, allow the merits, and correctness in law, to be ascertained.

If a decision is made and reasons are given at the time, the document containing these is headed "Decision of a Delegate of the Registrar of Trade Marks, with Reasons". Reasons issued subsequent to the making of a decision are headed "Reasons for a Decision of a Delegate of the Registrar of Trade Marks", or, if the reasons have been requested under reg 21.20, the document is headed "Statement of Reasons for a Decision by a Delegate of the Registrar of Trade Marks”.¹

Regulation 21.20 provides that the Registrar must comply with a request, in writing from a party to proceedings, for the reasons of a decision made in those proceedings.  However, this is rarely necessary since the reasons for any decision will normally be provided to the party or parties involved. This applies whether the matter is decided following an oral hearing or written submissions, as per reg 21.16.​​​​​​​

¹Under section 205 of the Act, a Deputy Registrar has all the powers and functions of the Registrar (except the power of delegation) and when a Deputy Registrar exercises a power or function under the Act, it is taken to have been exercised by the Registrar. Therefore, decisions issued by the Deputy Registrar are headed "Decision of the Registrar of Trade Marks, with Reasons" rather than “Decision of a delegate of the Registrar of Trade marks” (emphasis added).