Amie Sapiecha v ACIS Holdings Pty Ltd

This matter concerned an application for the removal of a trade mark from the Register due to non-use, brought by Amie Sapiecha (the Applicant) against ACIS Holdings Pty Ltd (the Opponent). The Applicant sought to remove trade mark registration number 1854277 from the Register in relation to certain services. The Opponent opposed this application, filing evidence and submissions. The decision was made based on written submissions and the evidence filed by the parties.

The primary legal issue before the Hearing Officer was whether the Opponent had used the trade mark in Australia in good faith in relation to the "Challenged Services" during the three-year period ending one month before the filing of the removal application. This period was identified as 13 March 2020. The Opponent bore the onus of rebutting the allegation of non-use by establishing, on the balance of probabilities, that the trade mark had been used in good faith or that circumstances prevented such use during the relevant period.

The Hearing Officer found that the Opponent had failed to provide convincing proof of use. The evidence presented, including screenshots and an invoice, was largely undated, dated after the relevant period, consisted of unsupported assertions, or originated from internal files. Crucially, the evidence did not demonstrate use of the trade mark as a badge of origin in relation to the Challenged Services during the specified period. Furthermore, the Opponent's assertion of obstacles to use, such as waiting for the outcome of other proceedings, was not corroborated by any evidence. Consequently, the ground for removal under section 92(4)(b) of the relevant legislation was established.

The Hearing Officer also considered the discretion under section 101 of the Act not to remove an unused trade mark. However, the Opponent failed to provide any cogent evidence to persuade the Hearing Officer that it was reasonable to exercise this discretion in their favour. The public interest in maintaining the integrity of the Register was deemed to outweigh any potential reasons for retaining the mark. Accordingly, the Hearing Officer directed that the trade mark registration be partially removed from the Register for the Challenged Services and awarded costs against the Opponent.