Guccio Gucci SpA v Qui Chen

Guccio Gucci SpA (the applicant) sought to register several trade marks, which were opposed by Qui Chen (the opponent). The decision was made by Iain Thompson, acting as the Registrar of Trade Marks. The Registrar was required to decide whether to register the trade marks or refuse registration, having regard to the grounds on which the applications were opposed.

The primary legal issue before the Registrar was to determine the extent to which the grounds of opposition had been established by the opponent. This involved assessing the evidence presented in support of the opposition and considering the impact of the applicant's withdrawal of some of its applications. The Registrar also had to determine the appropriate costs to be awarded to the opponent, considering both the successful oppositions and the withdrawn applications.

The Registrar reasoned that the opponent had succeeded in its opposition to the registration of trade marks 1267765, 1333589, 1333594, and 1355018. Consequently, the opponent was entitled to its costs in relation to these applications. For the withdrawn applications (1267764, 1325666, 1333670, and 1383984), the Registrar inferred that the withdrawal was due to the applicant's anticipation of likely failure. As the opponent was put to expense and inconvenience in opposing these applications before their withdrawal, the Registrar determined it was appropriate for the opponent to also be awarded costs in relation to the official fees for opposing each withdrawn application. The Registrar applied the principle that costs should follow the event where an opposition is successful or where a withdrawal suggests an admission of weakness in the application.

The Registrar ordered that the applicant pay the opponent's costs in relation to each of the opposed and withdrawn applications, with costs for evidence and hearings to be apportioned appropriately.