Dalmec Pty Ltd v Dalmec S.p.A

Dalmec Pty Ltd (the Applicant) sought the removal of two trade marks registered by Dalmec S.p.A (the Opponent) from the Register of Trade Marks. The grounds for removal were based on non-use, specifically under sections 92(4)(a) and 92(4)(b) of the *Trade Marks Act 1995* (Cth). The hearing was conducted before a delegate of the Registrar of Trade Marks, with the Opponent relying on written submissions and the Applicant represented by counsel.

The primary legal issue before the delegate was whether the Opponent had used the registered trade marks in good faith during the relevant three-year period preceding the application for removal. The delegate focused on the ground under section 92(4)(b), which requires proof of no use or no use in good faith within the specified period. The delegate noted that section 100(1) of the Act placed the onus on the Opponent to rebut the allegation of non-use by demonstrating genuine commercial use of the trade marks as a badge of origin, indicating a connection in the course of trade.

The delegate reasoned that the Opponent had failed to provide sufficient evidence to rebut the allegation of non-use. Applying the principles established in cases such as *E&J Gallo Winery v Lion Nathan Australia Pty Ltd* and *Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd*, the delegate considered what constitutes use as a trade mark. While acknowledging that a single bona fide use could be sufficient, the delegate also referred to *Nodoz Trade Mark*, which suggests that a single act of use must be established by overwhelmingly convincing proof. Ultimately, the delegate found that the evidence presented did not persuade them to exercise discretion against removal.

Consequently, the delegate directed that the Opposed Marks be removed from the Register of Trade Marks in respect of all goods specified in the registrations, effective one month from the date of the decision, subject to any appeals. The Opponent was also ordered to pay the Applicant's costs.