Dashern Pty Ltd v Sledge USA Inc

This matter concerned an application by Sledge USA Inc (the Non-Use Applicant) to remove the registered trade mark "sledge" from the Register for non-use. The trade mark was registered to Dashern Pty Ltd (the Opponent) for goods in Class 25, including shoes, clothing, and headgear. The application for removal was made under section 92(4)(b) of the Trade Marks Act 1995, alleging that the trade mark had remained registered for a continuous period of three years ending one month before the application was filed, without use in Australia. The Opponent filed a notice of opposition to this application.

The primary legal issue before the Delegate of the Registrar of Trade Marks was whether the Opponent had successfully rebutted the allegation of non-use. Under section 100 of the Act, the onus was on the Opponent to prove, on the balance of probabilities, that it had used the trade mark in good faith in relation to the registered goods during the relevant three-year period. The relevant period for this application was the three years ending on 21 March 2009. The Opponent also had the opportunity to argue that circumstances constituting an obstacle to use within the relevant period prevented its use, as provided by section 100(3)(c).

The Delegate considered evidence provided by the Opponent, including statutory declarations from its director, Nicholas Bokas, accompanied by various annexures. However, the Delegate found that none of the exhibits were sufficient to substantiate use of the trade mark in respect of any of the registered goods. Consequently, the Delegate determined that the Opponent had failed to rebut the allegation of non-use.

As the Opponent had not discharged its onus to prove use, the Delegate directed that Registration 965903 be removed from the Register in its entirety, effective one month from the date of the decision, unless an appeal was filed. The Non-Use Applicant was awarded its costs against the Opponent.