Bremick Pty Ltd v SSAB Technology AB

Bremick Pty Ltd, the registered owner of the trade mark GREENCOAT, successfully opposed an application by SSAB Technology AB for the partial removal of the trade mark from the Register. SSAB Technology AB sought to remove the trade mark in relation to "Metal materials for building and construction excluding small items of metal hardware including fasteners and screws," arguing non-use. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether SSAB Technology AB had established grounds for the partial removal of the trade mark under section 92(4)(a) of the *Trade Marks Act 1995* (Cth). This section requires proof that, on the filing date of the trade mark application, the applicant had no intention in good faith to use the trade mark in Australia, or authorise its use, in relation to the specified goods, and that the registered owner had not used the trade mark in good faith in Australia in relation to those goods prior to the relevant period. The onus was on Bremick Pty Ltd, as the removal opponent, to rebut these allegations.

The delegate found that the onus on a removal opponent under section 92(4)(a) is not arduous, particularly when the opponent provides a clear statement of its intention to use the mark. Bremick Pty Ltd provided a declaration from its Manufacturing and Supply Executive stating an intention to use the GREENCOAT trade mark as a brand name for a range of metal hardware products with an anti-corrosive coating, without limiting its application to items of a particular size. Evidence was presented demonstrating Bremick's manufacture and sale of both small and large metal hardware items, and industry practice supported the commonality of such a product range. The delegate concluded that Bremick Pty Ltd had satisfied its onus in showing an intention to use the trade mark for the goods in question, and SSAB Technology AB had provided insufficient evidence to suggest otherwise.

Consequently, the delegate determined that the grounds for partial removal under section 92(4)(a) had not been established. The application for partial removal was unsuccessful, and the trade mark registration was directed to remain on the Register for all registered goods. Bremick Pty Ltd was awarded costs against SSAB Technology AB.