Rainer Werner Angerer v Angelo Di Labio

[1999] ATMO 116

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

RE:Opposition by Rainer Werner Angerer to registration of trade mark application 751496(25) - DI LABIO and FLOWER device - in the name of Angelo Di Labio.

Background
On 29 September 1999, I issued a decision concerning the above matter. I found that the ground of opposition claimed under s.58 was not proved and, therefore, I dismissed the opposition. The matter of costs was not decided at that time due to a set of unusual circumstances that arose immediately prior to the hearing. In a covering letter that accompanied my decision I allowed fourteen days for the opponent to present its case concerning costs. The opponent sent these submissions in time via facsimile. I now intend to address the issue of costs in the matter.

Submissions and Discussion in relation to Costs
As the substantive matter was decided in favour of the trade mark applicant, the usual run of events would see costs awarded to follow this result. The opponent, however, raised the following issues to support his case. That party has argued that the attendance of a Dr Taylor to represent the applicant is not allowable in terms of the Trade Marks Act 1995. The opponent further claims that Dr Taylor is not a patent attorney, trade mark agent or solicitor.

Secondly, the opponent has claimed that it was unnecessary and unreasonable that the applicant was represented in Canberra at the hearing of 17 September 1999, when it could have been represented via telephone from Perth.

Finally, the opponent has claimed that it would be unreasonable for the applicant to claim costs under Part 2 of Schedule 8 of the Trade Mark Regulations, given the capacity of the applicant to appear at the hearing by telephone.

I will now deal with these three issues in the same order as the opponent's submissions.

Section 155 of the Act prevented unauthorised persons from acting in any trade mark matters. However, this section of the Act was repealed by the Intellectual PropertyLaws Amendment Act 1998 - No. 100, 1998 (assented 27 July 1998). Since that time, no restriction has been placed on any party to represent an applicant or an opponent in proceedings before the Registrar.

The opponent's second claim is not a valid issue in view of the fact that the applicant did appear by telephone. This detail is outlined in the last paragraph of the Background section of my decision of 29 September 1999.

Finally, I find that for me not to consider a claim of costs by the applicant under Part 2 of Schedule 8 of the Regulations would be unreasonable. Part 2 allows a party to claim 'Expenses and Allowances'. Broadly, these are out-of-pocket expenses that a party has had (or will have) to pay in order to run their opposition. In the present circumstances, as the applicant was represented via telephone, I can imagine that a telephone call charge may constitute an appropriate claim, whereas a claim for travel and/or accommodation may not.

Conclusion
In summary, I find that there is nothing before me to affect the usual course of events. Thus I find that costs should follow the result. Accordingly, I award costs in the matter to the applicant, Angelo Di Labio. On application, these costs will be taxed, certified and allowed by a trade marks officer appointed by the Registrar for that purpose.

Don Nancarrow
Acting Hearing Officer
10 November 1999.