AgCare Biotech Pty Ltd v Crop Smart Pty Ltd

This matter concerned an opposition to the removal of a trade mark from the Register, heard before Michael Kirov, delegate of the Registrar of Trade Marks. The Removal Applicant sought to remove the trade mark SMART 450 from the Register on the grounds of non-use, while the Opponent, AgCare Biotech Pty Ltd, argued that it had used the trade mark in Australia from August 1998 in relation to a herbicide. The Opponent contended that its use of the trade mark SMART 450, as evidenced by purchase orders, invoices, and product labels, qualified as use of the registered trade mark under section 100(3)(a) of the *Trade Marks Act 1995* (Cth), which permits use of a trade mark with additions or alterations not substantially affecting its identity.

The central legal issue before the delegate was whether the Opponent's use of the trade mark SMART 450 constituted use of the registered trade mark, or if the variations amounted to alterations that substantially affected its identity. The Removal Applicant did not dispute that the Opponent had used the trade mark SMART 450 in the course of trade, but contested that this use was of the registered mark. The delegate was required to determine if the differences between the registered mark and the mark as used were substantial enough to negate the claim of use under the Act.

The delegate considered the Opponent's submission that its use of SMART 450 was equivalent to the registered mark, referencing *QH Tours Ltd v Mark Travel Corporation* for the proposition that minor alterations might not affect a trade mark's identity. However, the delegate found this case unhelpful, distinguishing it by noting that the element "SERVICE" in *QH Tours* was descriptive and redundant. In contrast, the delegate found the stylisation of the word "SMART" in the present case to be significant, not only in signalling its trade mark status but also in distinguishing it from numerous other registered marks containing "SMART" in Class 5. The delegate concluded that the stylisation was part of the identity of the trade mark, and that the Opponent had not demonstrated use of the registered trade mark in good faith during the non-use period.

Consequently, the delegate found that the opposition had not been established and that there were no circumstances warranting the exercise of discretion to prevent removal. The delegate directed that the registration be removed from the Register one month from the date of the decision, subject to any appeal. The Removal Applicant was awarded costs.