What to Consider Before Appealing an IP Australia Decision
You may be left feeling disappointed with IP Australia’s decision during your trade mark opposition proceedings. This is especially likely if the outcome is not in your favour. Of course, you have the option of appealing the decision of IP Australia to either the Federal Courts or the Administrative Appeals Tribunal. However, there are a number of points you should consider before deciding to file a notice of appeal.
Point #1: Do You Have The Right To Appeal?
If IP Australia arrives at an unfavourable decision during opposition proceedings, your instinctual reaction might be to appeal the decision. However, appealing a decision is no light practice. Firstly, you need to consider whether you have sufficient grounds to appeal the decision. Under the Trade Marks Act (the Act) there are a set of statutory rights to appeal that arise regarding specific decisions.
For example, under the Act, a decision in an opposed removal application can be appealed to the Federal Courts. Whereas, you can appeal a decision to refuse an extension of time to the Administrative Appeals Tribunal (AAT).
You generally have 21 days to file a notice of appeal in the Federal Courts and 28 days to request a review from the AAT from the date IP Australia delivers their decision. Therefore, it would be wise to seek legal advice to ensure you have the right to appeal. You should also work with a lawyer to identify which grounds you can rely on in your notice of appeal.
A lawyer can also help you make an informed decision as to whether you should pursue appealing a decision of IP Australia. This will depend on the likely outcomes of court proceedings.
Point #2: What Are The Outcomes of An Appeal?
You must be aware of the outcomes which an appeal can lead to. This ensures that these options align with your desired outcome. When the Federal Courts hear an appeal from the decision of the Registrar at IP Australia, they do not decide whether the evidence provided to IP Australia supports the decision. Instead, the Federal Court re-decides the matter based on the evidence you provide. They will also consider any further evidence you seek to provide. The Court hears the appeal without a presumption in favour of the Registrar’s decision. This means the Federal Court will consider the weight of the Registrar’s decision. However, it will not be determinative to the Court’s final decision.
Similarly, the AAT conducts a complete re-decision of the matter based on its merits. Therefore, you can think of the AAT as standing in the shoes of the original decision-maker (in this instance, the Registrar at IP Australia) when it conducts merits review. However, merits review is only available in limited instances depending on the nature of IP Australia’s decision.
Ultimately, you should discuss with your lawyer whether appealing your decision will lead to your desired outcomes. Not only will a lawyer advise you on the strength of your case, but they can also provide you with alternative ways to resolve your dispute that avoid costly court proceedings or lengthy merit reviews.
Point #3: Costs and Time
A major factor determining whether applicants eventually appeal to the Federal Courts is the cost involved in court proceedings. As you have likely heard, court proceedings are costly. Not only does initiating an appeal cost a substantial amount, but combined legal fees and processes within court proceedings themselves all add up. If you turn out to be the unsuccessful party, there is a high chance that you must pay the costs awarded to the successful party.
Before appealing IP Australia’s decision, weigh up the potential benefits of achieving a decision in your favour to the costs of pursuing the appeal. A lawyer can help you assess your options. However, it is ultimately your decision whether you decide to appeal the decision or not.
As a general rule of thumb, you should only pursue an appeal as far as it is necessary to protect your exclusive rights.
If you have strong grounds to achieve a favourable outcome, and your trade mark is vital to the operation of your business, it would be worthwhile appealing IP Australia’s decision. If, however, you seek to defend your application simply on principle, it could lead to unwanted costs and lengthy proceedings.
Before appealing a decision of IP Australia, you should take time to consider whether you have the right to appeal the particular decision. It would be wise to seek legal advice early to determine whether you have a strong case to appeal and whether the potential outcomes outweigh the costs and time of proceeding with an appeal.
Frequently Asked Questions
You can request a cooling-off period during opposition proceedings to negotiate with the opponent. You can arrive at a mutual decision before IP Australia makes its final decision. However, this ultimately depends on the opponent’s willingness to reach an agreement with you.
Most trade mark applications are vulnerable to opposition. You can, however, minimise the potential for opposition to arise by keeping in mind the grounds of opposition when you are applying for a trade mark. For example, one ground to oppose a trade mark application is that it contains a false indication of a product’s geographical origin. Consequently, you would know to apply for a trade mark that correctly identifies the origin of your product.