Cub Pty Ltd v Jack Singleton

Cub Pty Ltd (‘Removal Opponent’) applied to oppose applications by Jack Singleton (‘Removal Applicant’) to remove nine trade mark registrations from the Register of Trade Marks under section 92(4)(b) of the *Trade Marks Act 1995* (Cth). The applications sought complete removal of the trade marks, which were all in class 32 and related to beverages, on the grounds of non-use. The delegate of the Registrar of Trade Marks heard the matters together.

The delegate was required to determine whether the Removal Opponent had established use of the trade marks in Australia during the relevant three-year periods preceding the removal applications. If use was not established, the delegate then had to consider whether to exercise discretion under section 101(3) of the Act to retain the trade marks on the Register, even in the absence of proven use. The onus was on the Removal Opponent to rebut the allegations of non-use and to satisfy the delegate that it was reasonable not to remove the trade marks.

The delegate found that the Removal Opponent had not established use of the trade mark numbered 875717 BLUETONGUE PREMIUM LAGER within the relevant period, as evidence indicated use ceased in 2014 and any reintroduction occurred after the relevant period for that mark. However, the delegate was satisfied that the supply and sale of ‘Bluetongue beer’ at the Welcome to Brunswick brewery and beer garden from November 2020 to January 2021 constituted sufficient use for trade marks numbered 891611 bluetongue and device, 1230042 bluetongue and device, 1388528 Bluetongue PREMIUM LAGER and device, and 1388530 Bluetongue PREMIUM LIGHT and device. This use was considered real and genuine, despite being for a limited period and quantity, and was deemed to constitute use of altered marks under section 100(3)(a) of the Act.

The delegate exercised discretion to retain trade marks numbered 875717 BLUETONGUE PREMIUM LAGER, 882968 BLUETONGUE GINGER BEER, 1009417 BLUETONGUE, and 1230043 bluetongue and device in respect of all goods, and trade mark 1642685 BLUETONGUE – all in class 32, in respect of some goods. This decision was based on the purpose of Part 9 of the Act, which seeks to protect the integrity of the Register and consumer interests while accommodating the interests of registered trade mark owners where reasonable. The delegate was satisfied that it was reasonable not to remove these specific trade marks from the Register.