A simple guide to trade mark oppositions in Australia – Part 3

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When is the decision made?

A decision is usually handed down within three to six months after the hearing. A written decision will be issued, and the parties will be informed of their appeal rights.

Can a decision be appealed?

The unsuccessful party may first appeal to the Federal Court or the Federal Circuit Court.

The matter is usually considered an appeal ‘de-novo’, which basically means a retrial before the court. Each party must refile evidence and submissions. However, as the matter is now before a court, the rules of the court and rules of evidence apply.

The costs associated with an appeal will normally be significantly more than the costs of an opposition before the Registrar. One of the main reasons costs are so high is that much more effort and attention must be given to preparing evidence that will be considered persuasive and admissible according to the rules of evidence applicable in court proceedings.

A decision of the court can also be appealed to the Full Bench of the Federal Court. A further appeal can be filed with the High Court of Australia, but this is very, very rare.

Cullens is not a litigation firm, so we do not represent clients in appeals. However, should our clients become involved in an appeal, we provide referrals to experienced litigation lawyers.

How likely is an appeal?

That depends on the case and the parties. Statistically, only a small percentage of decisions by the Registrar are appealed. This means that trade mark oppositions can often be an efficient and cost effective means of deciding the fate of a trade mark.

The risk of an appeal is obviously greater where the losing party is a well-resourced company and the trade mark is commercially important to them.

What is the effect of winning an opposition?

An opposition decision (assuming there is no appeal) results in either the registration or refusal of a trade mark.

Sometimes a decision can result in a trade mark being registered for some goods or services, and refused for others.

An opposition decision that results in registration being refused does not compel a person to stop using a trade mark. Only a court can make such an order.

However, a successful opposition can often make the losing party less likely to use their trade mark, because they face a greater risk of being sued for trade mark infringement.

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