Centrestage Pty Ltd v Centrestage Group Pty Ltd
[2025] ATMO 179
•4 September 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CENTRESTAGE PTY LTD to registration of trade mark application number 2365519 (class 41) - Centrestage - in the name of CENTRESTAGE GROUP PTY LTD
Delegate: | Timothy Brown |
Representation: | Opponent: Benjamin Fitzpatrick of Counsel, instructed by Davies Collison Cave Applicant: Leah Annetta of Annetta Lawyers |
Decision: | 2025 ATMO 179 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 considered – prior use, honest concurrent use and other circumstances considered and not applicable – s 44 established – trade mark refused |
Background
This decision concerns an opposition brought by CENTRESTAGE PTY LTD (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark filed in the name of CENTRESTAGE GROUP PTY LTD (‘Applicant’):
Trade Mark Number: 2365519
Trade Mark: Centrestage (‘Trade Mark’)
Priority Date: 29 June 2023
Services:Class 41: Dance instruction; Dance choreography; Instruction in dancing; Organisation and conducting of dance, music and other entertainment festivals; Providing dancing facilities; Instruction in singing; Singing classes; Singing concert services; Arranging of concerts; Arranging and conducting of entertainment events; Ballet classes; Ballet shows; Cabarets; Arranging and conducting of concerts; Conducting of concerts; Direction of theatre shows; Directing of shows; Directing of theatrical shows; Directing of musical shows; Arranging of music performances; Music performance services; Musical performance services; Musical performances; Organisation of live shows; Production of live performances; Production of plays; Production of stage plays; Production of theatre; Provision of tuition; Provision of facilities for tuition (‘Applicant’s Services’)
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of acceptance of the Trade Mark for possible registration, the Opponent filed a Notice of Intention to Oppose on 29 January 2024, followed by a Statement of Grounds and Particulars (‘SGP’) on 27 February 2024. The Applicant filed a Notice of Intention to Defend on 19 March 2024.
The Opponent then filed evidence in support of the opposition on 25 June 2024. The Applicant filed evidence in answer on 29 September 2024. The Opponent filed evidence in reply on 3 December 2024.
Following the end of the period for filing evidence, the parties requested to be heard. The matter was heard before me, a delegate of the Registrar of Trade Marks (‘Registrar’) on 5 June 2025. The Opponent was represented by Benjamin Fitzpatrick of Counsel, with instruction from Davies Collison Cave. The Applicant was represented by Leah Annetta of Annetta Lawyers.
Grounds, Onus and Relevant Date
The nominated grounds of opposition are ss 44 and 62A. The Opponent did not press s 62A.
The Opponent bears the onus of establishing the ground of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, 29 June 2023 (‘Relevant Date’).
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Preliminary Issue
On 27 May 2025, the Applicant paid the requisite fee and sought to file new material consisting of:
A letter from Anthony Nagle of Nagle Accountants dated 27 May 2025 explaining the transfer of business to the Applicant in 2007;
Photographs of ‘evidence of concerts’ from 2016 to 2020;
A letter from Theo Hatzis, owner of Stately St, the former premises of the Applicant’s business, dated 27 May 2025; and
A letter from Mark Giannarelli, director of Minsk Pty Ltd, dated 27 May 2025.
This request was followed by another request on 4 June 2025 to file a copy of a letter sent to the Opponent by the Applicant’s legal representatives on 2 June 2025, the Opponent’s reply to that letter, and a link to an audio recording of an episode of a podcast entitled ‘Studio Bizz and All That Jazz’ featuring an interview between the host of the podcast and the Director of the Opponent, Mr David Greenwood.
Regulation 21.19 affords the Registrar discretion to consider whether available information is relevant and whether it should be taken into account when making a decision. Regulation 21.15(4) also provides that the Registrar ‘may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’. Neither regulation is a substitute for the evidence stages of opposition, and the party seeking admission of the evidence must make a compelling case for its inclusion. This should include an explanation regarding why the evidence was not filed earlier during the evidence stages of proceedings, why the information is crucial to the determination of the decision, the public interest in having the information considered, and the relative balance of convenience for the parties if the information is considered.
During the hearing I informed the Applicant I did not intend to exercise my discretion to consider this material in the hearing. I did not find that Applicant’s explanation regarding why this material was not filed earlier in proceedings satisfactory. The material subject to the request on 27 May 2025 appears to be filed in response to the Opponent’s submissions. The Applicant states that they ‘did not believe this information was necessary at the time we provided evidence’ and they ‘did not previously believe that this point was contested’. The Opponent’s submissions are not a basis for filing new material during this point in the opposition proceedings. Furthermore, I do not consider the material to be sufficiently probative to warrant consideration at this stage of opposition.
The letters subject of 27 May 2025 requests, each comprise of unsubstantiated statements, whilst the photographs are not accompanied by a declaration explaining the circumstances in which the photographs were taken or, more importantly, the subject matter of the photographs. In the absence of any accompany declaration providing context to these photographs, I am not willing to give any weight to this material.
Regarding the podcast and the material subject to the 4 June 2025 request, the Applicant states this material was not discovered until after the period for filing evidence had ended. This material concerns the Opponent’s business and the circumstances surrounding use of the Opponent’s trade marks, all of which are irrelevant to ground of opposition under s 44. Hence, I do not consider this material determinative to the outcome of this decision. Accordingly, I decline to give any weight to this material in the hearing.
Evidence
The following evidence was filed:
| Declarant and Position | Date | Exhibits |
| Evidence in Support | ||
| David Greenwood, sole Director of the Opponent (‘Greenwood’) | 24 June 2024 | DG-1 to DG-17 |
| Evidence in Answer | ||
| Ian White, Director of the Applicant (‘White’) | 27 September 2024 | IW-1 |
| Evidence in Reply | ||
| Isabelle Andrea Guzman, registered Trade Marks Attorney of Davis Collison Cave Pty Ltd *’Guzman’) | 3 December 2024 | IAG-1 |
| Isabelle Andrea Guzman (‘Guzman 2’) | 3 December 2024 | IAG-2 |
| David Greenwood (‘Greenwood 2’) | 2 December 2024 | DG-18 to DG-23 |
Opponent
Greenwood declares that the Opponent’s business commenced on 23 December 2010 when the business name ‘CENTRESTAGE GEELONG’ was registered. A copy of this business name registration, and subsequent business name registrations, including the name ‘CENTRESTAGE’ are exhibited to Greenwood.[4] The Opponent operates a performing arts centre service in Geelong, Victoria. The Opponent’s services include, amongst other things, producing, conducting and promoting entertainment events and performances, such as theatrical shows and stage plays, talent agency services, and ticketing services.
[4] Greenwood DG-3.
Greenwood declares that the Opponent’s first theatrical production began on 14 July 2011, and that since then the Opponent has produced over 100 theatre productions. Greenwood declares that each of these productions has been marketed by reference to the words ‘Centre Stage’.
The Opponent is the owner of the following registered trade marks (collectively, ‘Opponent’s Registrations’):
Trade Mark Number: 2170331
Trade Mark: CentreStage
Priority Date: 12 April 2021
Services:Class 41: Hire of theatre scenery; Reservation services for theatre tickets; Theatre booking services; Theatre restaurants (Entertainment); Theatre ticket agency services; Theatre ticket booking services; Theatre ticket reservation services; Arranging of exhibitions for educational purposes; Art gallery services for cultural or educational purposes; Business educational services; Career advisory services (education or training advice); Career counselling (education or training advice); Career counselling (training and education advice); Career information and advisory services (educational and training advice); Life coaching services (training or education services); Lingual education; Cultural, educational or entertainment services provided by art galleries
Trade Mark Number: 2170350
Trade Mark: (‘Opponent’s Mark’)
Priority Date: 12 April 2021
ServicesClass 41: Hire of theatre scenery; Movie theatre presentations; Movie theatre presentations in cinemas; Rental of theatre lighting; Reservation services for theatre tickets; Theatre booking services; Theatre restaurants (Entertainment); Theatre ticket agency services; Theatre ticket booking services; Theatre ticket reservation services; Arranging of exhibitions for educational purposes; Art gallery services for cultural or educational purposes; Career counselling (education or training advice); Career counselling (training and education advice); Life coaching services (training or education services); Lingual education; Mentoring (education and training); Choir singing; Instruction in singing; Singing and novelty telegrams (entertainment); Singing classes; Singing concert services; Rental of stage sets
Trade Mark Number: 2281583
Trade Mark: CentreStage
Priority Date: 6 July 2022
Services:Class 35: Talent management services; Administration of business affairs; Management assistance in business affairs; Business planning; Advisory services relating to business planning; Business strategic planning; Business planning consultancy; Agents' services (business management of actors, artists, authors, performing artists, photographers or writers); Artists' agent services; Career counselling (employment advice and information); Employment agencies; Employment advertising services; Employment agency services; Job agency services; Job placement services; Keynote speaking for promotional purposes; Promotional management for sports personalities; Advice relating to personnel management; Collection of personnel information; Consultancy relating to personnel management; Consultancy relating to personnel recruitment; Consultancy relating to the management of personnel
The Opponent holds the registrations of a number of domain names incorporating ‘centrestage’, including < < < and < Registrations for these domain names are provided in Greenwood.
Greenwood declares that the Opponent promotes the Opponent’s Registrations via Facebook, Instagram, TikTok, YouTube and Spotify. Exhibited to Greenwood are screenshots from these various social media platforms.
Greenwood 2 exhibits an extract from the Australian Investment and Securities Commission showing the registration of the Applicant in 2007. Greenwood 2 also exhibits screenshots from the Applicant’s website,
Guzman exhibits an adverse examination report issued by IP Australia in relation to the application to register the Trade Mark.
Applicant
White includes the following declarations:
statutory declaration of Marina Prior, the patron of Centrestage Performing Arts School, dated 26 July 2023 (‘Prior’);
statutory declaration of Paul Watson, Theatrical Director, actor and musician, dated 24 September 2024;
statutory declaration of Darinka Karlusic, Company Director, Executive Travel Management, dated 27 September 2024;
statutory declaration of Remy Leith Noonan, dancer, dated 24 September 2024;
statutory declaration of Madeline Ybarzabal, dated 24 September 2024;
statutory declaration of Jordan Ybarzabal, dated 24 September 2024; and
statutory declaration of Kurt Russo, former student of Centrestage Performing Arts School, dated 24 September 2024.
White states that the Applicant founded a performing arts school called ‘Centrestage Performing Arts School’ in 1991, and that this business has operated continuously since that time. In support of this contention, White refers to:
Prior, which attests to use of ‘Centrestage’ since 1991 by Ian and Leanne White;
an undated newspaper article referring to Ms Prior and the Trade Mark;
a newspaper article from The Sentinel dated 6 July 1992 referring to the Trade Mark;
registration of the business name ‘Centrestage Performing Arts School’ on 7 February 1997;
a brochure said to be created in 2021 by the Applicant promoting the 25th anniversary of the Centerstage Performing Arts School. White also exhibits a copy of an invitation to the 30th Anniversary celebration of the Applicant;
Instagram posts featuring the Trade Mark from 2019;
a list of concerts staged by the Applicant from between 1991 to 2024; and
an enrolment form dated 2024.
According to White, the Centrestage Performing Arts School provides training in dance, drama, musical theatre and acrobatics and has approximately 250 students. Some examples of promotional material relating to prominent former students are exhibited to White.
Mr White acknowledged that the Opponent has operated a performing arts business in Geelong since 2010 under the name ‘Centrestage’. White asserts, however, that the Opponent did not begin providing education services until 2018 and exhibits an announcement regarding the opening of Opponent’s performing arts academy. Mr White claims that the Applicant and the Opponent’s schools have operated without confusion for 6 years.
The remaining statutory declarations exhibited in White are from individuals familiar with both parties’ businesses. Except for Prior, these declarations attest to the Opponent’s awareness of the Applicant’s business and its use of the Trade Mark. For example, Noonan explains that she trained as a dancer at the Centrestage Performing Arts School from 1997 to 2009 and was subsequently employed as a teacher from 2006 to 2021. During 2019, Ms Noonan worked with Mr Greenwood on a theatre production as a choreographer whilst simultaneously being employed as a dance teacher by the Applicant. Ms Noonan declares that it was apparent that Mr Greenwood was aware of the existence of the Centerstage Performing Arts School. I will otherwise refer to these declarations where relevant in these written reasons.
Discussion and Reasons
Section 44
Section 44 relevantly provides:
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
(3) If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
In order to succeed under this ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of services that are similar to, or goods that are closely related to the Applicant’s Services.
In its submissions the Opponent relies on the Opponent’s Registrations as the basis for this ground of opposition. However, in its SGP the Opponent only cited the Opponent’s Mark. The first reference to the other two trade mark registrations was in Greenwood. Generally, the Opponent should amend its SGP in these circumstances. Otherwise, the Opponent risks the delegate limiting consideration of the material to the relevant particulars of the SGP. Whether to consider this aspect of the opposition depends on whether it has been fairly contested between the parties.[5] It is apparent the Applicant was aware of all the Opponent’s Registrations. The Opponent’s Registrations were referenced in White and in legal correspondence exhibited to White. In my view it is debatable whether this aspect of the opposition has been fairly contested. However, it proved ultimately unnecessary to refer to the other trade mark registrations. During the hearing the Applicant conceded that the relevant trade marks were at least deceptively similar and focused its submissions on the exception for prior use of the Trade Mark under s 44(4). Since the Opponent’s Mark shares the earliest priority date with trade mark registration 2170331 and covers substantially the same services, it is not necessary to consider the Opponent’s other two trade mark registrations further in this decision.
[5] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175, [141]-[144] (Nicholas, Burley, and Cheeseman JJ).
Turning to the substantive issues, the Opponent’s Mark has an earlier priority date and is held in the name of a person other than the Applicant. The Opponent’s Mark also specifies in Class 41 a variety of entertainment, theatre, booking services, education services and services relating to performing arts, which are clearly the same or similar to the Applicant’s Services.
The representations of the respective trade marks are shown below:
| Trade Mark | Opponent’s Mark |
| Centrestage |
Regarding whether the Trade Mark is substantially identical with or deceptively to the Opponent’s Mark, as stated earlier, during the hearing the Applicant conceded that the Trade Mark was at least deceptively similar to the Opponent’s Mark. I am also satisfied that this is the case. Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emerges from the comparison.[6] In this instance, the essential feature of both trade marks are the words ‘centre stage’. Although the Opponent’s Mark represents the two words with an offset alignment and includes a dash device between them, these differences are not sufficient to differentiate the trade marks. When compared side by side, I am satisfied that there is a total impression of resemblance between the trade marks and that the Trade Mark is substantially identical with the Opponent’s Mark.
[6] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
Accordingly, the Opponent has established a prima facie ground of opposition under s 44(2). I will now consider whether there has been prior use and/or honest concurrent use of the Trade Mark, or whether there are other circumstances that might justify acceptance of the Trade Mark.
Prior Use
Section 44(4) enables a trade mark which would otherwise have been rejected under s 44(1) and/or 44(2) to be registered due to prior continuous use of the trade mark. For s 44(4) to be established, the Applicant must demonstrate continuous use of the Trade Mark in relation to the Applicant’s Services from before the priority date of the Opponent’s Mark, 12 April 2021, until the Relevant Date.
The Applicant submits that its business significantly predates that Opponent’s, having began using the Trade Mark in 1991, and emphasises the claims that Opponent would have been aware of the Applicant’s Trade Mark well before filing the Opponent’s Registrations.
The Opponent submits that the Applicant has failed to establish prior use of the Trade Mark, noting ambiguity surrounding ownership of the Trade Mark, promotion of the Applicant services by reference to the trade mark ‘SHOWFIT’ rather than the Trade Mark, and the absence of any financial information that would go towards establishing continuous use of the trade mark.
From the outset, I note that much of the Applicant’s evidence concerns the Opponent’s knowledge of the Applicant and the Applicant’s use of the Trade Mark. This was the focus of a substantial portion of White, and, apart from Prior, each of the statutory declarations exhibited to White. I recognise that this in part was due to the nomination of s 62A as a ground of opposition. However, the Opponent’s knowledge or awareness of the Trade Mark is irrelevant to the question of whether the Applicant has demonstrated prior continuous use of the Trade Mark.
Turning to the parts of the Applicant’s evidence that engage with the Applicant’s alleged use of the Trade Mark, White states that the Applicant first began using the Trade Mark in 1991. This assertion is supported by assertion in Prior and a newspaper article from The Sentinel newspaper dated July 1992 that refers to a performing arts schooled called ‘Centrestage’. The article indicates that the performing arts school provides its services in Brunswick, Victoria. Whilst the article indicates that the Trade Mark was in use in 1992, it is less clear whether the Applicant or a predecessor in title was the user of the Trade Mark. Greenwood 2 exhibits an extract from the Australian Investment and Securities Commission showing that the Applicant itself was not established until 3 April 2007.[7] Other evidence seems to indicate Ian White and Leane White may have been the owners. The business name ‘CENTRESTAGE PERFORMING ARTS SCHOOL’ was registered on 7 February 1997.[8]
[7] Greenwood 2 Exhibit DG-18.
[8] White Exhibit 1.
White exhibits a list of concerts said to have been staged by the Applicant since 1991. The list of concerts includes references to the Trade Mark, namely in the form of ‘Singing Soiree at Centrestage’. However, this list does not appear to be a public document, nor is it substantiated by any evidence that reflects how the concerts were promoted, and critically, whether the Trade Mark was used in the promotion of those concerts. At its highest, this evidence provides a list of shows which may have been staged by the Applicant, but it does not demonstrate use of the Trade Mark.
The Applicant also relies on a brochure, which it claims was produced in 2016, and an invitation, said to be created in 2021, to a gala celebrating ‘Centrestage Group’ and its ’30 years in the Australian Performing Arts community’. The Opponent submits that the brochure and the invitation promote the Applicant’s school services by reference to the Trade Mark SHOWFIT rather than the Trade Mark. Whilst the SHOWFIT trade mark is present in both the brochure and the invitation, I am satisfied that these examples feature use of the Trade Mark. However, other than the references to the anniversary, both the brochure and the invitation are undated. This reflects an issue with most of the evidence relied on by the Applicant which is either undated or dated after the priority date of the Opponent’s Mark. Another example is the enrolment form and timetable, which feature the Trade Mark, are seemingly from 2024.
The exception is two screenshots of Instagram posts dated 16 March 2019 and 5 April 2019 that feature the words ‘Centrestage’ and the following representations of the Trade Mark:
The Opponent contends that these examples do not demonstrate use of a trade mark with additions or alterations that do not substantially affect the identity of the trade mark within the meaning of s 7. Whether a person has used a trade mark with addition or alterations that do not substantially affect the identity of the trade mark is in essence the same as the test for substantial identity.[9] It is also established that the use of several signs in combination does not preclude one of the signs acting as a trade mark to distinguish the goods or services.[10] In this instance I consider the Instagram posts to feature use of the Trade Mark despite presence of the S shape device or phrase ‘Performing Arts School’. The word ‘Centrestage’ is clearly featured both in combination with these elements and by itself.
[9] Optical 88 Limited v Optical 88 Pty Limited (No.2) [2010] FCA 1380 (Yates J); Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (Kenny J).
[10] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
The more significant issue with the Applicant’s evidence is the lack of continuous use demonstrated up to the Relevant Date. In my view, the Instagram posts represent the only demonstrated examples of prior use of the Trade Mark. These two examples occurred several years prior to the priority date of the Opponent’s Mark and well before the Relevant Date. However, the evidence does not demonstrate use of the Trade Mark in the intervening years. Accordingly, I do not consider the Applicant’s evidence sufficient to demonstrate continuous use of the Trade Mark.
Finally, regarding the profiles of former students included in White, I note that these profiles indicate that these individuals attended ‘Centrestage Performing Arts School’ at various dates. However, I do not regard the mention of ‘Centrestage Performing Arts School’ in individuals’ work or training histories on public profiles as constituting use of the Trade Mark.
For these reasons, I am not satisfied that the Applicant’s evidence demonstrates prior continuous use of the Trade Mark before the priority date of the Opponent’s Mark and to the Relevant Date. Accordingly, s 44(4) is not applicable.
Section 44(3) – honest concurrent use and/or other circumstances
The Applicant did not provide any substantial submissions in regard to honest concurrent use under s 44(3)(a) or otherwise draw my attention to any other circumstances that would make registration appropriate under s 44(3)(b).
For completeness, I note that the Applicant bears the onus of establishing that there has been honest concurrent use of the Trade Mark,[11] and that the relevant date for determining honest concurrent use is the priority date of the Trade Mark.[12] Relevant factors include:
[11] Trident Seafoods Corporation v Trident Foods Pty Ltd Limited [2018] FCA 1490, [186] (Gleeson J).
[12] Hill Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]-[164] (Lander J).
the honesty of the use;
the extent of use in terms of time, geographic area and volume of sales;
the degree confusion between the trade marks;
whether there are any instances of established confusion; and
the relative inconvenience to the parties should registration be permitted.[13]
[13] McCormick & Company Inc v McCormick [2000] FCA 1335, [30]-[32] (Kenny J).
The issues identified with the Applicant’s evidence of prior use are also applicable to s 44(3)(a). These issues are compounded by a lack of engagement with the question of the honesty of the Applicant’s use and the absence of any financial information that would help quantify the extent of any use of the Trade Mark by the Applicant, which in my view would preclude a finding of honest concurrent use.
For these reasons, I am also not satisfied that there has been honest concurrent use of the Trade Mark under s 44(3)(a), nor do I consider it appropriate to exercise the discretion under s 44(3)(b).
Decision
Section 55(1) relevantly provides:
Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established a ground of opposition under s 44. Accordingly, I refuse to register trade mark application number 2365519.
Costs
Both parties sought an award of costs. The Opponent sought consideration of an award of additional costs, noting the Applicant’s attempts to introduce additional material into the hearing, which the Opponent claims has resulted in additional time and expense.
Section 221 confers upon the Registrar a discretionary power to make an award of costs in respect of matters and in amounts provided for in the Regulations. Regulation 21.12 provides that for the purposes of s 221, a party to proceedings may apply for an award of costs in relation to those proceedings. These costs are awarded in accordance with reg 21.13(1)(a), which provides that costs are to be awarded in accordance with Schedule 8 of the Regulations. Notably, reg 21.13(1)(b) provides that if the Registrar has a discretionary power in relation to the award of costs, costs may be awarded as the Registrar ‘considers appropriate’. However, there is no provision in the Regulations that allows the Registrar to award costs other than those detailed in Schedule 8. The discretion referred to in 21.13(1)(b) is not a discretionary power to award varying costs, but an additional discretionary power to award costs in certain circumstances, namely the failure of parties to file a written summary of submissions in inter partes matters before the Registrar.[14]
[14] See: Regs 5.17(7), 6.9(4), 9.20(6), 17A34M(7), 17A.48V(6) and 21.20E(4).
The Explanatory Statement for the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013(No.1) states:
Under these new provisions, the Registrar may take a failure to file a summary of submissions into account in considering any award of costs between parties. This item amends regulation 21.13 to permit the Registrar to award costs where there is a discretionary power and the Registrar considers it appropriate.[15]
[15] Explanatory Statement, Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013 (No. 1) (Cth) 18 (‘Explanatory Statement').
While the conduct of the parties may factor into the Registrar’s discretion when deciding to award costs, once that award has been made, they are not factors that may be taken into account in determining the quantum.
Accordingly, as the Opponent has been successful and costs follow the event, I award costs against the Applicant under s 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
4 September 2025
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