Ines Mcleod and the Original Silverton Hotel Pty Ltd v the Silverton Hotel Pty Limited

This matter concerned a trade mark opposition heard by Alison Windsor, a Hearing Officer acting as a delegate of the Registrar of Trade Marks. The opponent, Ines McLeod and the Original Silverton Hotel Pty Ltd, opposed the registration of trade mark application number 1287161 by the Silverton Hotel Pty Limited. The dispute centred on the use and ownership of the trade mark "Silverton Hotel," which both parties acknowledged referred to an iconic hotel in Silverton, New South Wales, known for its appearances in films and advertising.

The opponent pursued several grounds of opposition, including use contrary to law (s 42(b)), likelihood of deception or confusion (s 43), the applicant not being the owner of the trade mark (s 58), the applicant not intending to use the trade mark (s 59), the trade mark being similar to one that had acquired a reputation in Australia (s 60), and the application being made in bad faith (s 62A). The onus was on the opponent to establish at least one of these grounds on the balance of probabilities, with the relevant date for assessment being the application filing date of 27 February 2009.

The Hearing Officer found that a number of parties, other than the applicant or its lessees, had used the trade mark in respect of the relevant services prior to the application filing date. Based on this finding, the Hearing Officer concluded that the applicant was not the owner of the trade mark, thereby establishing the ground of opposition under section 58. As one ground of opposition was successfully established, the opponent was successful in the opposition.

Consequently, the Hearing Officer refused to register trade mark application 1287161 and awarded costs to the opponent against the applicant according to the official scale.