Daryl K Linane v Nicholas Saba Sportswear Pty Ltd

[1991] ATMO 5

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by NICHOLAS SABA SPORTSWEAR PTY LTD to registration of trade mark application number B403175 in the name of DARYL K. LINANE - Request for an award of costs

This matter arises from the withdrawal of the opposition by NICHOLAS SABA SPORTSWEAR PTY LTD (the opponent) to registration of the trade mark LINANE in the name of DARYL K. LINANE (the applicant).  Following withdrawal of the opposition, the applicant's attorneys, Davies & Collison, Patent Attorneys of Melbourne, requested that an award of costs be made in favour of the applicant.  The opponent's attorneys, Kelvin Lord and Company, Patent and Trade Mark Attorneys of Perth disputed such an award on the grounds that the opposition had been withdrawn, no evidence was on file and neither party would be appearing at any hearing in the matter.
          In deciding the matter I have considered previous decisions of the Registrar regarding costs, particularly in the case of TattiloEditrice SpA v Playboy Enterprises Inc, 1986 AIPC 90-349. In that instance, an Opposition matter, the applicant was the party which did not wish to proceed and withdrew its application. The opponent lodged a claim for costs to which it was found entitled, by the Chief Assistant Registrar. It has been the Registrar's general approach in

opposition proceedings that, so long as the parties have been given an opportunity to be heard, the inference can be drawn that, if an application is withdrawn after opposition has been lodged, then such action is the consequence of the opposition proceedings and the opponent is entitled to its costs.  Conversely, if an opposition is withdrawn, then the assumption can be made that the applicant has been successful and costs, in that instance, are awarded to the applicant.  Both parties were sent a formal hearing notice on 7 November 1990.  The opponent then lodged a notice of withdrawal of opposition on 16 November 1990, while the applicant, in noting this in his attorney's letter of 21 November 1990, declined to be represented at the hearing and sought an award of costs.  Section 119 of the Act gives to the Registrar the general power to award costs.  There is nothing in the Act and Regulations which states that, if a hearing does not take place, then no costs can be awarded.  It follows that, despite no evidence being lodged and no hearing attended, some costs may have been generated in prosecuting the matter.
          Having succeeded in his defence of the opposition to the extent that the opponent was not prepared to proceed with its opposition and withdrew it, I find the applicant is entitled to his costs in the matter.  Accordingly, the applicant should submit a bill of costs to be taxed, allowed and certified by an officer of the Trade Marks Office.

(I.M. FORNO)
Senior Examiner
14 January 1991