Cheeky Bits Pty Ltd v Cheeky Bits for Women Pty Ltd

Cheeky Bits for Women Pty Ltd (the Applicant) applied to the Registrar of Trade Marks for the removal of two registered trade marks, CHEEKY BITS (the Word Mark) and a logo mark (together, the Trade Marks), owned by Cheeky Bits Pty Ltd (the Opponent). The application for removal was based on the ground of non-use, specifically under section 92(4)(b) of the *Trade Marks Act 1995* (Cth), which requires that a trade mark has remained registered for a continuous period of three years ending one month before the application date, without use or good faith use in Australia in relation to the specified goods. The Trade Marks were registered for Class 25 goods, including clothing, footwear, and headgear.

The legal issue before the delegate of the Registrar was whether the Opponent had established use, or good faith use, of the Trade Marks in Australia in relation to the specified goods during the three-year period preceding the application for removal, which commenced on 26 September 2017. Under section 100(1)(c) of the Act, the onus was on the Opponent to rebut the allegation of non-use. The matter was decided on the written record, comprising statutory declarations from both parties and written submissions.

The Opponent's evidence, primarily a statutory declaration from its director, Michael Robinson, detailed significant investment in brand protection and product development, including expenses for design, product creation, and a website. It also explained that brand and product growth were hindered by Mr. Robinson's serious medical condition, Atrial Fibrillation, which led to hospitalisations, and the subsequent closure of the manufacturer of samples. However, the delegate found that this evidence did not demonstrate actual use of the Trade Marks in Australia during the relevant period, nor did it establish a sufficient basis for the Registrar to exercise discretion to allow the trade marks to remain on the register.

Consequently, the delegate directed that the Trade Marks be removed from the register for all specified goods. The Opponent was ordered to pay the Applicant's costs, as allowed under the *Trade Marks Regulations 1995* (Cth). The removal was stayed pending any appeal.