52.2.What is a hearing?

Date Published

A hearing is an interactive presentation, in a forum conducted by the Deputy Registrar or a Hearing Officer from the Oppositions and Hearings Section acting under delegation from the Registrar.

Subsection 54(1), reg 5.17, 6.9, 9.20, 17A.34M, 17A.48V and 21.20E make specific provision for the Registrar to hear parties involved in opposition proceedings.  Subsection 33(4) (or subsection 176(1A) in the case of a certification trade mark) makes provision for an applicant for registration of a trade mark to be heard if the Registrar intends to reject the application. Section 203 makes general provisions for hearings, requiring the Registrar to give the applicant for the exercise of any power under the Act, an opportunity to be heard if the Registrar intends to exercise that power adversely to the applicant.

Opposition matters may only be finalised after the parties have had an appropriate opportunity to file evidence and the opportunity to make representations at a hearing. In respect of extensions of time brought in relation to opposition matters, the Registrar cannot refuse the additional time without allowing the applicant for the extension of time an opportunity to be heard. In ex parte matters generally, a hearing is the final opportunity for making submissions on the matter to be decided by the Registrar.

Regs 21.15 and 21.16 govern hearing procedures in general. Subreg 21.15(2) allows that the Registrar may give a person an opportunity to be heard by asking them for written submissions, or notifying that they may request an oral hearing, or simply notifying them of the date, time and place of an oral hearing.

If the Registrar decides that a person may be heard by way of written submissions, they will be notified of the period (at least 10 business days) within which they should provide those submissions. After considering the submissions, the Registrar will decide the matter and advise the person of the outcome. (subreg 21.16(1).

Subregs 21.16(2) to (8) govern procedure to be followed in an oral hearing before the Registrar.

Oral hearings are routinely held via videoconference or telephone.  Oral hearings may be held in person, but this is by exception only. Examples of exceptional reasons for an oral hearing to be held in person include:

  • a person wanting to attend is unable to use the internet or telephone (for example due to disability and/or a lack of available infrastructure);
  • the evidence includes physical specimens that cannot be adequately shown or seen over a video connection.

As stated in the official notice published on 9 November 2022, a request to be heard in person must be in writing and should include:

  • the agreement of any other parties (if applicable); and
  • a brief explanation of the reasons why the matter should be heard in person.

Requests to be heard in person will be considered on a case-by-case basis, noting that the Registrar has the sole discretion as to whether to hold any hearing in person.  

The parties present at a hearing, by whatever means, are able to make oral representations on the matter before the Registrar. Under subreg 21.16(5), the Registrar may direct a person attending a hearing to provide a written summary of submissions. In opposition hearings under reg 5.17, 6.9, 9.20, 17A.34M, 17A.48V and 21.20E, the opposing party (that is, the party which bears the onus of proof in the matter) must provide a summary of submissions at least 10 business days before the hearing and the other party must respond at least 5 business days before the hearing. The summaries of submissions must be filed with the Office and copied to the other party. It is preferable for this to be done via electronic means, given the time constraints close to the actual hearing date.  In making an award of costs the Registrar is able to take into account, “as the Registrar considers appropriate” (see subreg 21.13(1)) a party’s failure to provide a written summary of submissions.

 

2.1  What are inter partes hearings?

Matters arising under the Act in which the Registrar is required to make a decision which will determine the rights of one of the parties involved relative to another party are referred to as “inter partes” matters.  These include oppositions to registration of trade marks under section 52, oppositions under section 96 to applications for removal for non-use, and oppositions to extensions of time under section 224 which are for a period greater than three months. Both of the interested parties have the opportunity to be heard before the decision is made, and the hearing is referred to as an inter partes hearing.

 

2.2  What are ex parte hearings and when do they overlap with inter partes hearings?

When a party makes an application for the exercise of a discretionary power under the Trade Marks Act 1995 and the Registrar proposes to exercise that power adversely to the applicant, the applicant is entitled to be heard on the matter before the Registrar.  This entitlement derives from s 203, but its existence is duplicated in other parts of the Act, such as subsections 33(4) and 176(1A). Such a hearing is called an "ex parte" hearing - "from or on one side only, as in a controversy; in the interest of one party" (online edition of The Macquarie Dictionary).

These ex parte hearings are heard by the Deputy Registrar or a Hearing Officer in the Oppositions and Hearings Section who has been delegated to decide such matters. A hearing may be requested by the applicant, or set down unilaterally by the Registrar 2    In either instance, a fee is required – see Items 15 and 17 of Schedule 9.

In some matters the Act refers to both an applicant and an opponent, for example opposition to registration under Part 5. Where, in such a context, the hearing is of the substantive matter, such proceedings are inter partes.

However, the line between ex parte and inter partes matters is not always clear. Where, for instance, the Registrar intends to refuse a request by party A for an extension of time to oppose registration of an application filed by party B, the Registrar is obliged, by section 203, to give A an explicit opportunity to be heard. B, however, is entitled to make representations about the extension before it is granted – regs 5.4, 6.7, 9.4, 17A.31, 17A.48B and 21.20C – and the efficient way of resolving this is to hear both A and B on the matter.  In such a case, while the matter has all the appearance of an inter partes hearing it is nonetheless a proceeding initiated by the Registrar and costs would be unlikely to be awarded.

 

2.3  Circumstances under which ex parte hearings may occur

Ex parte hearings may be requested (or set down) under the following circumstances:

 

​​​​​​​2  The 1995 Act provides specifically for the setting down of a hearing on the initiative of the Registrar. Generally, the Registrar will propose to reject or refuse the application; the applicant may then request a hearing.

3  A hearing on the matter of revocation of acceptance is not explicitly required by section 203. However, the exercise of this discretion may have serious results for the trade mark applicant and in the interests of procedural fairness the Registrar will give the applicant an opportunity to make representations at a hearing if revocation is proposed.

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