Armco Steel Corp & Armco, Inc v Road & Construction Supplies of Australia Pty Ltd

This matter concerned an opposition by Armco Steel Corp and Armco, Inc (the opponents) to applications by Road & Construction Supplies of Australia Pty Ltd (the removal applicant) to remove two trade mark registrations, numbers 171831 and 220477, from the register. Both registrations essentially comprised the word "ARMCO" and covered a range of common metal goods, including building materials. The removal applicant sought removal under section 92(4)(b) of the *Trade Marks Act 1995* (the Act), alleging that the trade marks had not been used in good faith during the three-year period ending 19 January 1999.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the trade marks had been used in Australia during the relevant three-year period. As the removal application had been opposed, the onus was on the opponents to rebut the allegation of non-use under section 100(1)(c) of the Act. The delegate considered the evidence presented, including declarations from both parties, and noted that the opponents had neither appeared nor made written submissions at the hearing.

The delegate reasoned that the evidence indicated that the goods sold by the opponents into Australia, namely steel strip, were manufactured in the USA and shipped as coils of stainless steel. These were then consumed by Australian manufacturers as raw material, incorporated into other goods, and did not retain their original form. The delegate applied principles from cases such as *YANX* and *PALL MALL*, focusing on whether the trade mark had been used in commerce within Australia. The delegate found that the invoices and shipping documents, which indicated sales where ownership passed to the buyer outside Australia, did not demonstrate use of the trade mark in the Australian market in a manner indicative of origin. The delegate concluded that the trade mark had not been used in Australia during the relevant period.

Consequently, the delegate ordered that the trade mark registrations be removed from the register for all goods for which they were registered, effective 30 days from the decision unless an appeal was filed. The removal applicant was awarded its costs, to be taxed according to specific guidelines.