Australian Seniors Finance Pty Ltd v Australian Seniors Insurance Agency Pty Ltd

This matter concerned an application by Australian Seniors Finance Pty Ltd (the Applicant) seeking the removal of certain trade marks from the Register of Trade Marks, pursuant to sections 92(4)(a) and (b) of the *Trade Marks Act 1995* (Cth). The dispute arose from the Applicant's assertion that the trade marks had not been used during the relevant period. Australian Seniors Insurance Agency Pty Ltd (the Opponent) was the registered owner of the trade marks in question. The decision was made by Robert Wilson, a Delegate of the Registrar of Trade Marks.

The primary legal issues before the Delegate were whether the Opponent had used the challenged trade marks during the relevant period, and if not, whether the discretion vested in the Registrar to remove the trade marks from the Register should be exercised in favour of the Opponent. The Applicant contended that there was no evidence of use of the challenged trade marks within the specified period and that the Opponent had rebranded in 2015, effectively abandoning the marks.

The Delegate found the Applicant's submissions persuasive. The evidence presented by the Opponent consisted of two examples of alleged use, both of which predated the relevant period by more than ten years. Furthermore, other examples of signs referred to by the Opponent were not substantially identical to the challenged trade marks. In the absence of any submissions from the Opponent to the contrary and having reviewed the evidence, the Delegate was not satisfied that the Opponent had used the challenged trade marks during the relevant period. Consequently, the grounds for removal were established. The Delegate then considered the discretion under section 101 of the Act, noting that while the discretion exists, it should not be exercised lightly in favour of an opponent who has failed to establish use. Given the lack of evidence of use and the absence of submissions from the Opponent, the Delegate determined that the discretion should not be exercised in the Opponent's favour.

As a result, the Delegate ordered that the challenged trade marks be removed from the Register one month from the date of the decision, subject to any appeal. The Applicant, as the successful party, was awarded its costs.