49.6. Opposition proceedings

The filing of a notice of opposition temporarily halts the removal of the trade mark. So long as the applicant files a notice of intention to defend (regs 9.15, 17A.48Q), the onus is on the opponent to rebut the grounds for removal so that the trade mark remains on the Register (s 100).

The evidence stages of a non-use opposition are generally similar to those for an opposition to registration / protection of a trade mark.  However there is an important exception.

If no evidence is filed in support of the opposition to removal and the opponent does not ask to be heard within the time allowed for filing evidence in support, the opposition proceedings are taken to have ended (regs 9.17, 17A.48S).  Provided the Registrar is satisfied the non-use application is in order, section 97 will then apply (subregs 9.17(3), 17A.48S(3)).  The trade mark will be removed from the Register to the extent specified in the non-use application.

If during proceedings the right or interest which caused the applicant to apply for removal becomes vested in another person, the other person may be substituted as the applicant (s 92(5) and reg 17A.48D).  If the right or interest which caused the opponent to oppose removal becomes vested in another person, the other person may be substituted as the opponent (s 96A and reg 17A.48D).  In both cases the relevant party must inform the Registrar in writing.

• Part 51 General Opposition Proceedings

6.1 Determination of opposition

Once the evidence stages have ended and the opposition has not been withdrawn or the non-use application dismissed (s 222 and regs 9.10, 17A.48K) provided all relevant fees are paid the Registrar must decide whether or not to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the non-use application relates (s 101).  The decision may be made after hearing one or both parties or on the written record.  

The Registrar’s decision may be appealed to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) (s 104).  If the decision is to remove the trade mark it will not be implemented until the period allowed by the relevant court rules to appeal the decision has expired.

If an appeal is filed with the Court the Registrar will take no action until ordered to do so.  However, if appeal proceedings are discontinued without any order being made by the court the Registrar’s decision will be implemented.

• Part 52 Hearings, Decisions, Reasons and Appeals