AB SCA Finans and SCA Hygiene Australasia Pty Limited v Sorbies Pty Ltd

This decision concerns a trade mark opposition heard by Debrett Lyons, a Hearing Officer of the Trade Marks Hearings. The parties involved were AB SCA Finans and SCA Hygiene Australasia Pty Limited (the opponents) and Sorbies Pty Ltd (the removal applicant). The dispute arose from an application to remove a registered trade mark from the register.

The primary legal issue before the Hearing Officer was whether the registration of the trade mark should be maintained for the specified goods, or if it should be restricted due to alleged non-use or insufficient use by the proprietor. The removal applicant contended that the opponents had not sufficiently used the trade mark in relation to all the goods for which it was registered, thereby justifying a restriction or removal.

The Hearing Officer reasoned that the opponents were not required to demonstrate "exceptional circumstances" to justify the exercise of discretion in their favour. While acknowledging that the evidence of use could have been more comprehensive, particularly concerning dispensers for wet wipes, the Hearing Officer found that the case was one where the registrar's discretion was appropriately exercised in favour of the opponent. Applying principles from established case law, including *Colorado Group Limited v Strandbags Group Pty Limited*, the Hearing Officer affirmed that proprietorship in a trade mark extends to goods of the same kind or kindred articles, not just identical goods. Consequently, the Hearing Officer refused to restrict the goods for which the trade mark was registered.

The Hearing Officer ordered that the opposition be successful, and the trade mark would remain on the register for the goods as registered. As the successful party, the opponents were awarded their costs against the removal applicant, to be calculated in accordance with the Trade Marks Regulations 1995.