Opposition by Viceroy Cayman Limited to registration of trade mark application number 1956269 (class 43) – Viceroy – in the name of Anthony Otto Syrowatka

This matter concerned an opposition by Viceroy Cayman Limited (the Opponent) to the registration of trade mark application number 1956269, for the mark "Viceroy" in class 43, by Anthony Otto Syrowatka (the Applicant). The proceedings were heard by Katrina Brown, a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether any of the grounds of opposition relied upon by the Opponent, namely those under sections 58, 60, and 62A of the *Trade Marks Act 1995* (Cth), had been established. The Opponent bore the onus of proving at least one of these grounds on the balance of probabilities, with the relevant date for consideration being the filing date of the opposition.

The delegate found that the Opponent had established the ground of opposition under section 58 of the Act. The Opponent, which shared common ownership with Viceroy Hotels, LLC, had been operating hotels and resorts under the "Viceroy" name since 2002, with extensive promotion to the Australian public. The Applicant's company, PT Lembah Maharaja, had also been operating a hotel in Bali under the "Viceroy" name since 2004, with promotion in Australia. However, the delegate determined that the Opponent's prior use and promotion of the mark in relation to hotel services in Australia was sufficient to establish the section 58 ground. Consequently, the delegate refused to register the trade mark application. The Applicant was ordered to pay the Opponent's costs.