Daryl K Linane v Nicholas Saba Sportswear Pty Ltd

This matter concerned a request for an award of costs following the withdrawal of an opposition by Nicholas Saba Sportswear Pty Ltd (the opponent) to the registration of a trade mark application by Daryl K. Linane (the applicant). The applicant's attorneys sought costs, while the opponent's attorneys disputed the award on the basis that the opposition had been withdrawn, no evidence had been filed, and no hearing would take place. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether costs could be awarded to the applicant when the opponent had withdrawn its opposition, even though no evidence had been filed and no hearing was conducted. The delegate also considered the general approach of the Registrar regarding costs in opposition proceedings.

The delegate reasoned that it is the Registrar's general practice to award costs to an opponent if an application is withdrawn after opposition has been lodged, as this withdrawal is seen as a consequence of the opposition. Conversely, where an opposition is withdrawn, the assumption is that the applicant has been successful. The delegate noted that both parties had received a hearing notice, and the opponent subsequently withdrew its opposition. The delegate found that the applicant had succeeded in defending the opposition to the extent that the opponent withdrew it, and therefore the applicant was entitled to costs. The delegate confirmed that the absence of evidence or a hearing does not preclude an award of costs, as some costs may have been incurred in prosecuting the matter.

The delegate ordered that the applicant was entitled to his costs in the matter and directed the applicant to submit a bill of costs for taxation, allowance, and certification by an officer of the Trade Marks Office.