Calico Global Pty Ltd v Calico LLC

This decision concerns an opposition by Calico Global Pty Ltd (the Applicant) against a trade mark registration held by Calico LLC (the Opponent). The dispute arose from an allegation of non-use of the trade mark in relation to services within Class 44 of the registration. The matter was heard by Debrett G. Lyons, a Hearing Officer at Trade Marks Hearings.

The legal issues before the Hearing Officer were whether the Opponent had used the trade mark in good faith in Australia during the relevant period (15 April 2011 to 15 April 2014) in relation to the services in Class 44, and alternatively, whether there were reasonable grounds for the Registrar to exercise discretion under sections 101(3) and 101(4) of the Act not to remove the trade mark from the register for that class. The Applicant also challenged the admissibility of certain production documents, arguing they were not properly incorporated into the evidence.

The Hearing Officer found that the production documents, produced in response to a notice to produce under section 202(c) of the Act, formed part of the evidence of record, as the Applicant had sufficient opportunity to consider and respond to them. The onus of rebutting the allegation of non-use rested with the Opponent, on the balance of probabilities. The Hearing Officer noted that Kevin Owens was the registered owner for the entirety of the relevant period. However, the Hearing Officer was not persuaded that it was reasonable to exercise discretion in the Opponent's favour, observing that the evidence regarding use in Class 44 was potentially problematic and that Class 41 coverage appeared more apposite to the Opponent's business.

Consequently, the Hearing Officer ordered the removal of the trade mark from the Register in respect of the Class 44 services, to take effect not less than one month from the date of the decision, subject to any notice of appeal. The Applicant, as the successful party, was awarded costs against the Opponent.