Cafe Do Brasil v Scrava Pty Ltd

This case concerned an application by Cafe Do Brasil S.p.A. (the applicant) to remove trade mark No. 456317, KIMBO COFFEE, from the Register of Trade Marks. The trade mark was registered in the name of Scrava Pty Ltd (the opponent) in respect of "coffee". The applicant sought removal on the grounds that the mark was registered without a good faith intention to use it, and that there had been no good faith use of the mark for a continuous period of at least three years prior to the application, ending one month before the application date. The applicant also noted its own pending application for the trade mark KIMBO.

The delegate of the Registrar of Trade Marks was required to determine whether the grounds for removal under section 23 of the Act had been established. Specifically, the delegate had to assess whether the applicant had demonstrated a lack of intention to use the mark in good faith at the time of registration and/or a period of non-use for at least three years prior to the application. The delegate also had to consider whether any failure to use the mark was due to "special circumstances in the trade" within the meaning of section 23(4) of the Act, which would excuse the non-use.

The delegate found that the applicant had presented sufficient evidence, including survey evidence from persons engaged in the coffee trade, to establish a prima facie case of non-use of the KIMBO COFFEE trade mark during the relevant period. The opponent's evidence, primarily a declaration from its director, indicated that sales of coffee under the KIMBO trade mark only commenced in September 1990, after significant delays in obtaining suitable coffee blends and packaging. However, the delegate determined that the difficulties described by the opponent were personal to the trader and did not constitute "special circumstances in the trade" as interpreted by relevant case law, which requires circumstances affecting the trade as a whole.

Consequently, the delegate concluded that the applicant had successfully made out its case for removal, and the opponent had failed to establish a defence of special circumstances. As no argument was presented for the Registrar to exercise discretion against removal, the delegate ordered that trade mark No. 456317 be removed from the Register and awarded costs to the applicant.