Australian Council for Education Research Limited v Acer Incorporated

The Australian Council for Educational Research Limited (‘Removal Opponent’) opposed an application by Acer Incorporated (‘Removal Applicant’) to remove several registered trade marks from the Register under section 92 of the *Trade Marks Act 1995* (Cth). The Removal Opponent is the registered owner of trade marks ACER, ACER CONQUEST, and ACER QUEST, registered across various classes including computer software, printed matter, educational and training services, and psychological testing services. The Removal Applicant sought the removal of these trade marks, initially for all registered goods and services, but later amended its application to seek partial removal for some marks. The decision was made by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the Removal Opponent had used its registered trade marks in Australia in good faith during the relevant period, which was the three years ending on 1 September 2020, as required by section 92(4)(b) of the Act. The Removal Applicant had nominated both section 92(4)(a) and 92(4)(b) as grounds for removal, but the delegate focused on the latter, which concerns non-use of a trade mark for a continuous period of three years. The onus was on the Removal Opponent to rebut the allegation of non-use.

The delegate applied the principle that "use in good faith" means real, commercial use, and that a single bona fide use can be sufficient to rebut an allegation of non-use, provided it is established with convincing proof. The delegate considered evidence relating to the ACER CONQUEST software (Trade Mark 235) and ACER QUEST software (Trade Mark 236). For Trade Mark 235, the delegate was satisfied that the Removal Opponent had used it in good faith in Australia for computer software relating to the analysis of educational, medical, and social data, including the software itself and associated instruction manuals. However, the evidence did not demonstrate use for the broader category of "education" beyond data analysis, nor for "educational publications in electronic form" as distinct from software manuals. For Trade Mark 236, similar findings were made, with use established for computer software relating to test and questionnaire analysis for education and research, but not for the broader categories of "education and research" or "educational publications in electronic form."

Consequently, the delegate ordered partial removal of Trade Marks 235 and 236 from the Register in respect of the goods and services for which use had not been sufficiently demonstrated. The delegate also considered Trade Mark 491, noting that the Removal Opponent offered audio and visual material online under this mark, but the specific goods and services for which removal was sought were not detailed in the provided text. The final orders indicate that partial removal of Trade Marks 560640, 753235, 753236, and 948509 was established, along with the full removal of Trade Mark 583491.