Western Australia Sports Centre Trust Trading as VenuesWest v M.G. Investment Holdings Pty Ltd

This matter concerned an opposition filed by Western Australia Sports Centre Trust Trading as VenuesWest (the Opponent) against a trade mark application by M.G. Investment Holdings Pty Ltd (the Applicant). The dispute arose from the Applicant's attempt to register a trade mark that the Opponent claimed was identical to a logo it had developed and used for its Perth Arena venue since its opening in November 2012. The decision was made by Nicholas Smith, a Hearing Officer acting as a delegate of the Registrar of Trade Marks, based on the written record.

The primary legal issue before the Hearing Officer was whether the Applicant was the owner of the trade mark, as per section 58 of the relevant Act. This ground of opposition required the Opponent to demonstrate, on the balance of probabilities, that the Applicant was not the rightful owner of the trade mark as of the application filing date of 2 November 2015. The onus rested on the Opponent to establish this ground.

The Hearing Officer reasoned that the Opponent had provided evidence of its prior use of an identical logo for services including entertainment, recreational, sporting, and cultural activities, and the provision of facilities for events. The Applicant, in contrast, had not provided evidence demonstrating its ownership or use of the mark. Crucially, the Applicant had been deregistered as a company on 28 December 2016. Despite being offered an opportunity to amend its application to remove certain services or to demonstrate any assignment of rights prior to deregistration, the Applicant failed to do so. Consequently, the Hearing Officer found that the ground of opposition under section 58 of the Act had been established in relation to the services of "Arranging of festivals; Arranging parties".

As the ground of opposition under section 58 had been established for part of the applied-for services, and following the principle that a trade mark application fails as a whole if it fails in any respect, the Hearing Officer refused to register the trade mark. The Applicant had not taken up the opportunity to amend its services to proceed with registration for the remaining services.