Deco Australia Pty Ltd v Aluwood Australia Pty Ltd

Deco Australia Pty Ltd (the Removal Opponent) opposed applications by Aluwood Australia Pty Ltd (the Removal Applicant) to remove six registered trade marks from the Register under section 92 of the *Trade Marks Act 1995* (Cth). The applications for removal were based on alleged non-use of the trade marks, specifically numbers 1300939 (Bush Cherry), 1302778 (Snow Gum), 1331689 (Ironbark), 1335604 (Blackbutt), 1302782 (Kwila), and 1332466 (Kwilla), all registered in class 40. The proceedings were heard by Tracey Berger, Hearing Officer.

The primary legal issue before the court was whether the Removal Opponent had used the registered trade marks in Australia in good faith in relation to the registered services during the three-year period ending one month before the filing of the non-use applications. The Removal Applicant contended that the trade marks had remained registered for a continuous period of three years without use. The Removal Opponent bore the onus of rebutting this allegation by demonstrating use of the trade marks, or substantially identical marks, in good faith, or by establishing circumstances that constituted an obstacle to their use during the relevant period.

The Hearing Officer found that the Removal Opponent had provided sufficient evidence of promotion, advertising, sales figures, customer lists, and sales invoices to establish use of the registered marks. Crucially, regarding the trade mark "Kwilla," the Hearing Officer determined that while the mark "Kwilla" itself had not been used, the use of the substantially identical mark "Kwila" constituted use of the registered mark "Kwilla." The omission of the second 'l' in "Kwila" was not considered to affect the identity of the mark.

Consequently, the Removal Opponent successfully established its opposition to the removal of each of the registered trade marks. The Hearing Officer ordered that all six trade marks, numbers 1300939, 1302778, 1331689, 1335604, 1302782, and 1332466, were to remain on the Register for the registered services.