5. Hearing of the opposition

Date Published

Regulations 5.17, 9.20, 17A.34M and 17A.48V give the parties the following opportunities to ask to be heard by the Registrar in relation to the opposition.

Regulations 5.17(2) and 17A.34M(2) allow the trade mark applicant/IRDA holder to ask to be heard if the period for filing evidence in support has ended and:

  • all the evidence in support has been filed or
  • no evidence in support has been filed.

Regulations 9.20(2) and 17A.48V(2) allow both the removal/cessation applicant and the opponent to ask to be heard if:

  • all the evidence in support has been filed or
  • no evidence in support has been filed.​​​​​​​

The process for an opposition to removal/cessation of protection is notably different from the process for opposition to registration at this point.  If the opponent does not file or serve any evidence, the application is taken to be unopposed and proceedings are taken to have ended (regs 9.17 and 17A.48S).  Provided the Registrar is satisfied the application for removal/cessation of protection is in order (regs 9.17(3) and 17A.48S(3)) it will go ahead as if there had been no opposition (s 97).

Regulations 5.17, 9.20, 17A.34M and 17A.48V then allow either party to the opposition to ask to be heard if either or both the evidentiary periods for evidence in answer or evidence in reply have ended and:

  • all the evidence for the opposition has been filed ; or
  • no evidence has been filed in the relevant period.

Once the period for the parties to serve their evidence has ended the Registrar must decide the opposition (ss 55, 101 and 102 and regs 17A.34N and 17A.48X) provided the relevant fees are paid. If neither party has requested a hearing, the Registrar will write to both sides to give them an opportunity to do so (reg 21.15).  

In the absence of a hearing request the Registrar is able to decide the matter by reference to relevant information held in the Trade Marks Office (reg 21.15(6)). Relevant information includes the notice of opposition, any evidence which has been properly filed and written submissions (if any) by the parties. Such a decision is commonly referred to as a ‘decision without a hearing’.

Notwithstanding the onus on the Registrar to decide the opposition as soon as possible, the parties may ask for the hearing or decision on the written record to be delayed.  The Registrar will consider such requests but only if both parties agree to the delay.  An appropriate reason may be the conduct of settlement negotiations. If the parties are negotiating, they should file a request for a cooling-off period if they have not already had one, or a direction to suspend the opposition proceedings.

A decision on the opposition will not be delayed indefinitely.  The onus is on the parties to keep the Registrar informed of what is happening and that there is still valid reason for delay.