Blackbook Traveler Pty Ltd. v Black Book No 1 (AU) Pty Ltd

Blackbook Traveler Pty Ltd. (the Applicant) sought the removal of the trade mark "Black Book No 1 (AU)" from the Register of Trade Marks on the grounds of non-use. Black Book No 1 (AU) Pty Ltd (the Opponent) opposed the removal. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established use of the trade mark in Australia during the relevant three-year period preceding the application for removal, as required by section 92(4)(b) of the *Trade Marks Act 1995* (Cth). This involved determining the onus of proof, which rests with the opponent to rebut allegations of non-use under section 100 of the Act.

The delegate reasoned that the Opponent had demonstrated use of the trade mark in relation to core travel services. While some services were not actively used, the delegate found these to be incidental or closely related to the core services. The delegate concluded that the Opponent had a commercial interest in maintaining registration for all services and that there was no significant risk of consumer confusion. Consequently, the delegate exercised discretion to retain the trade mark on the Register for all services.

The delegate ordered that trade mark registration 1604634 remain on the Register in respect of all services and that the Applicant pay the Opponent's costs.