Combined Group of Companies Pty Ltd v Reln Pty Ltd

This matter came before Iain Campbell Thompson, a delegate of the Registrar of Trade Marks, concerning an application by Reln Pty Ltd (the removal applicant) to remove the trade mark "RAINMATE" (registration number 1040954) from the Register, and an opposition by Combined Group of Companies Pty Ltd (the removal opponent). The dispute centred on whether the removal opponent had made genuine use of the trade mark in Australia in relation to the goods for which it was registered.

The primary legal issue before the delegate was to determine whether the removal opponent had established grounds for the continued registration of the "RAINMATE" trade mark, specifically in light of evidence of non-use. This involved assessing the nature of the goods in respect of which the trade mark was registered and comparing this with the evidence of actual use presented by the removal opponent. A secondary issue arose regarding the correct classification of the goods under the International (Nice) Classification of Goods and Services.

The delegate considered evidence of the removal opponent's use of the trade mark on "plastic tank kits," which included a flat-pack, child-proof lid, tap, and stand, sold as a complete assembly. Advertisements described these as "The only flat-packed water tank in Australia!" The delegate noted that the removal applicant's research indicated that under the eighth edition of the Nice Classification, "tanks, not of metal nor of masonry" and "plastic water tanks" fall within Class 20, which covers "furniture ... of plastic" and "plastic goods." In contrast, the registered trade mark covered "water supply installation" in Class 11, which pertains to "apparatus for ... water supply and sanitary purposes." The delegate concluded that the registration should be limited to "plastic water tanks and parts therefor" and that the correct class should be Class 20, not Class 11.

Consequently, the delegate directed that, unless an appeal was filed, the registration of the "RAINMATE" trade mark would be removed from the Register in respect of all goods except "plastic water tanks" one month from the date of the decision. Furthermore, the delegate ordered that the class number of the registration be amended to Class 20. The removal applicant, having been successful in restricting the goods, was awarded costs.