Trademark Hearing Representation

When hearings are fixed

• After a reply to the examination report has not resolved the objection
• In opposition proceedings, after both sides have filed evidence
• In rectification proceedings, before the mark is removed or the register corrected
• Where the registrar proposes to impose conditions or limitations on the registration

What actually gets argued

Where the objection is that the mark lacks distinctiveness, the argument is that it is capable of distinguishing your goods, supported where possible by evidence of use and reputation acquired in the market.

Where the objection is a conflicting mark, the argument turns on distinguishing the two — visually, phonetically and conceptually — and on showing the goods, trade channels and consumers differ enough that confusion is unlikely.

Adjournments are limited

The rules restrict the number of adjournments available to a party, and each request must be made in advance with reasons. Requests made on the day, or beyond the permitted number, are commonly refused.

Where an adjournment is refused and nobody appears, the matter proceeds ex parte. The practical rule is to treat the first date as the date, not as an opening position.

How we handle it

1. 1 Reviewing the file We read the examination report, the reply already filed and the cited marks to establish what the hearing officer will focus on.
2. 2 Preparing the argument The line of argument is built around the specific objection, with the strongest evidence identified.
3. 3 Assembling evidence Use evidence and any consent from a cited proprietor are compiled for production at the hearing.
4. 4 Written submissions Where the registry directs, written submissions are filed in advance.
5. 5 Appearance An attorney appears and argues the matter before the hearing officer.
6. 6 Outcome On acceptance the mark proceeds to publication. On refusal, we advise on appeal within the limitation period.

Frequently asked questions