1. Section 55(1) relevantly provides:

Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has established a ground of opposition under s 44. Accordingly, I refuse to register trade mark application number 2365519.

1. Both parties sought an award of costs. The Opponent sought consideration of an award of additional costs, noting the Applicant's attempts to introduce additional material into the hearing, which the Opponent claims has resulted in additional time and expense.
2. Section 221 confers upon the Registrar a discretionary power to make an award of costs in respect of matters and in amounts provided for in the Regulations. Regulation 21.12 provides that for the purposes of s 221, a party to proceedings may apply for an award of costs in relation to those proceedings. These costs are awarded in accordance with reg 21.13(1)(a), which provides that costs are to be awarded in accordance with Schedule 8 of the Regulations. Notably, reg 21.13(1)(b) provides that if the Registrar has a discretionary power in relation to the award of costs, costs may be awarded as the Registrar 'considers appropriate'. However, there is no provision in the Regulations that allows the Registrar to award costs other than those detailed in Schedule 8. The discretion referred to in 21.13(1)(b) is not a discretionary power to award varying costs, but an additional discretionary power to award costs in certain circumstances, namely the failure of parties to file a written summary of submissions in inter partes matters before the Registrar.[14]
3. The Explanatory Statement for the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013(No.1) states:

Under these new provisions, the Registrar may take a failure to file a summary of submissions into account in considering any award of costs between parties. This item amends regulation 21.13 to permit the Registrar to award costs where there is a discretionary power and the Registrar considers it appropriate.[15]

1. While the conduct of the parties may factor into the Registrar's discretion when deciding to award costs, once that award has been made, they are not factors that may be taken into account in determining the quantum.
2. Accordingly, as the Opponent has been successful and costs follow the event, I award costs against the Applicant under s 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).

[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[5] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175, [141]-[144] (Nicholas, Burley, and Cheeseman JJ).

[6] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

[9] Optical 88 Limited v Optical 88 Pty Limited (No.2) [2010] FCA 1380 (Yates J); Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (Kenny J).

[10] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[11] Trident Seafoods Corporation v Trident Foods Pty Ltd Limited [2018] FCA 1490, [186] (Gleeson J).

[12] Hill Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]-[164] (Lander J).

[13] McCormick & Company Inc v McCormick [2000] FCA 1335, [30]-[32] (Kenny J).

[14] See: Regs 5.17(7), 6.9(4), 9.20(6), 17A34M(7), 17A.48V(6) and 21.20E(4).

[15] Explanatory Statement, Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013 (No. 1) (Cth) 18 ('Explanatory Statement').