MGM Grand Hotel LLC v Surfside Eststates Pty Limited

This matter concerned an opposition by MGM Grand Hotel LLC (the Opponent) to the registration of trade mark application No. 1055565 by Surfside Estates Pty Limited (the Applicant). The Opponent sought to prevent the registration of the Applicant's trade mark on various grounds, including that its use would be contrary to law under section 42(b) of the *Trade Marks Act*. The Opponent bore the onus of establishing its grounds of opposition on the balance of probabilities.

The primary legal issue before the Hearing Officer was whether the Opponent had discharged its onus in establishing any of the grounds of opposition. Specifically, the Opponent contended that the use of the Applicant's trade mark would be contrary to law. The Opponent presented evidence detailing the history and fame of the "STUDIO 54" trade mark, primarily associated with a highly notorious nightclub in New York City that operated in the late 1970s and early 1980s, and its subsequent, less sensational, iterations.

The Hearing Officer found that the Opponent had not discharged the onus of establishing its case in relation to any of the grounds of opposition. In particular, the ground of opposition pursuant to section 42(b) of the *Trade Marks Act* failed, as the Opponent had not demonstrated that the use of the Applicant's trade mark would be contrary to law. Consequently, the opposition failed.

The Hearing Officer ordered that the trade mark application No. 1055565 may proceed to registration upon expiry of the appeal period, with a direction that registration should not occur until any appeal has been decided or discontinued. As the Opponent was unsuccessful, no order was made as to costs.