Carlton & United Berages Ltd v Paul Mulard

Carlton & United Beverages Ltd (the applicant) sought the removal of a registered trade mark from the register on the grounds of non-use. Paul Mulard (the opponent) was the registered owner of the trade mark. The dispute concerned the use of the trade mark in relation to non-alcoholic drinks in class 32.

The primary legal issue before the Hearing Officer was whether the opponent had made sufficient use of the trade mark in relation to the relevant goods to prevent its removal from the register. The applicant contended that the evidence did not demonstrate use of the trade mark on the goods themselves, arguing that any use shown referred to the opponent's business rather than trade mark use on products. The opponent, conversely, argued that use of the trade mark on invoices, letterhead, and other documents relating to the goods constituted valid trade mark use under the Act.

The Hearing Officer found that trade mark use is not limited to the mark being physically affixed to the goods. Citing subsection 7(4) of the Act and commentary from Shanahan’s Australian Law of Trade Marks and Passing Off, the Hearing Officer determined that use of a trade mark on the internet, in advertisements, invoices, or other documents referring to the goods can constitute trade mark use. The Hearing Officer was satisfied that the use attested to by Mr Mulard, even though a formal assignment had not been registered, was use in good faith by Mr Mulard, who believed he was the legal owner at the time.

The application for non-use was dismissed, and the opponent's opposition to the removal was upheld, at least in respect of goods in classes 5 and 32. Costs were awarded against the applicant on the official scale.