Roadwhyz NSW (Hunter) Incorporated v Western Australia Local Government Association

This decision concerns an application for the registration of a trade mark, brought by Roadwhyz NSW (Hunter) Incorporated (the Applicant) and opposed by the Western Australia Local Government Association (the Opponent). The matter came before Adrian Richards, who was acting in a capacity that involved deciding on the registration of trade marks, likely as the Registrar or a delegate thereof. The core of the dispute revolved around whether the grounds of opposition raised by the Opponent were sufficiently established to warrant refusal or modification of the trade mark's registration.

The primary legal issue before the decision-maker was the interpretation and application of section 55 of the relevant Act, which governs the Registrar's decision-making process following opposition to a trade mark application. Specifically, the decision-maker had to determine whether any of the grounds on which the Opponent based their opposition had been established to any extent, and if so, what the consequence should be for the registration of the trade mark. The decision-maker also had to consider the usual principle that costs follow the event in such proceedings.

The decision-maker reasoned that the Opponent had failed to establish any ground of opposition to any extent. Consequently, pursuant to section 55(1)(b) of the Act, the decision was made that the trade mark could proceed to registration. This registration was to occur one month from the date of the decision, unless an appeal was filed, in which case registration would be stayed pending the outcome of the appeal. The decision-maker also ordered that the Opponent pay the Applicant's costs, applying the scale set out in Schedule 8 of the *Trade Marks Regulations 1995* (Cth), as there were no reasons presented to depart from the general rule that costs follow the event.