Datis Technology Pty Ltd v Vodaphone Hutchison Australia Pty Limited

This matter concerned an application by Datis Technology Pty Ltd (the Removal Applicant) to remove the trade mark MESSAGEMATE from the Register of Trade Marks, held by Vodaphone Hutchison Australia Pty Limited (the Opponent). The Removal Applicant sought removal on the grounds of non-use, pursuant to section 92 of the relevant Act. The Opponent, incorporated in October 1997, had been promoting a telecommunications call management system under the MESSAGEMATE trade mark and had evidence of sales and advertising of related equipment between 2007 and 2009.

The primary legal issue before the Registrar was whether the Opponent had used the MESSAGEMATE trade mark in Australia in good faith during the relevant period, or whether there were circumstances constituting an obstacle to its use, as required to rebut the grounds for removal under section 92. The onus was on the Opponent to establish such use or obstacle, as stipulated by section 100 of the Act.

The Registrar found that there had been no use of the MESSAGEMATE trade mark within the relevant period and that no circumstances constituting an obstacle to its use had been established. However, notwithstanding these findings, the Registrar exercised discretion under section 101(3) of the Act to allow the trade mark to remain on the Register. The Removal Applicant, not having been successful in its application, was not awarded costs.