Aquarian Foundation Inc v Steven Penson

The matter before the Registrar of Trade Marks concerned an application by Aquarian Foundation Inc (the Applicant) for the removal of a trade mark from the Register on the grounds of non-use, opposed by Steven Penson (the Opponent). The Applicant’s submissions were presented by Nancy Lee, and the Opponent’s submissions were presented by Jannifer Werner, president of the Opponent, with Cathy Reid, treasurer, also present. The hearing was conducted via video conference and telephone, respectively, on 16 August 2024, and supplemented by written submissions.

The core legal issues for determination were whether, on the day the trade mark application was filed, the Applicant had no intention in good faith to use the trade mark in Australia, or to authorise its use, or to assign it to a body corporate for use in Australia, in relation to the specified goods and/or services. Additionally, the court had to consider whether the Applicant had not used the trade mark in Australia, or had not used it in good faith, at any time within the period of one month preceding the filing of the removal application.

The court was required to apply the provisions of Part 9 of the Act, specifically section 92(4)(a), which outlines the grounds for removal of a trade mark for non-use. Under section 100(1)(a) of the Act, the onus rested on the Opponent to rebut the Applicant's allegations on the balance of probabilities. This meant the Opponent had to establish that, on the filing date of the original trade mark application, the Applicant did have the requisite intention to use, authorise the use of, or assign the trade mark for use in Australia. Alternatively, the Opponent needed to demonstrate that the trade mark had been used in good faith in Australia by the Applicant within the relevant period, which concluded one month before the removal application was filed on 17 September 2022.