The article first appeared in the INTA Bulletin dated 15 March 2018.
The recent Autumnpaper decision of the Federal Court of Australia, Autumnpaper Ltd v Metropolitan Group Pty Ltd  FCA 1578 (Dec. 8, 2017)), serves as a reminder that appeals of decisions of the Trade Marks Office in opposition proceedings are de novo and that a successful opponent should appear in an appeal or risk the initial decision being overturned by default judgment.
Autumnpaper’s application to register the MCQUEEN mark encountered a distinctiveness objection on the basis that it is a common surname appearing on the electoral roll more than 750 times. That objection was overcome with evidence of use demonstrating that the mark was capable of distinguishing. Metropolitan Group opposed and, in those proceedings, the Delegate of the Registrar of Trade Marks found that the evidence filed by Autumnpaper was insufficient to demonstrate acquired capacity to distinguish.
An appeal was filed by Autumnpaper. However, the opponent, Metropolitan Group, did not enter an appearance in the proceeding and the Registrar of Trade Marks advised the court that it would not play an active part in the proceedings or take an amicus role. Accordingly, Autumpaper sought judgment in default.
Judge Lee noted that, under Australian law, an appeal from the Trade Marks Office is de novo. Accordingly, the court did not have any evidence before it as to why the mark MCQUEEN should not be registered and, therefore, there was no basis for refusing the application. As a result, the decision of the Delegate was overturned and costs were ordered against Metropolitan Group.
Accordingly, if a successful opponent before the Trade Marks Office does not participate in an appeal, it runs the risk that the Delegate’s decision will be overturned irrespective of the merits of the case. This presents a strategic opportunity for an applicant to secure registration of its rights where it does not consider that a successful opponent has the wherewithal to contest federal court proceedings.