doTERRA Holdings LLC v Australasian Conference Association Limited

This decision concerns an application by doTERRA Holdings LLC (the Applicant) to remove a trade mark from the Register of Trade Marks, held by Australasian Conference Association Limited (the Opponent). The dispute arose from an application for removal under section 101 of the relevant legislation, alleging non-use of the trade mark in relation to registered goods. The hearing officer was tasked with determining whether the Opponent had made sufficient use of the trade mark in Australia to justify its continued registration.

The primary legal issue before the hearing officer was whether the Opponent had established use of the trade mark in respect of all the registered goods. The Applicant contended that the Opponent had not used the trade mark in Australia during the relevant period, thereby providing grounds for its removal from the Register. The Opponent, in turn, sought to rebut this allegation by demonstrating actual use of the trade mark.

The hearing officer considered evidence presented by both parties, noting that some of the evidence was subject to a claim of confidentiality. Applying the principles from *Source Homeloans Pty Ltd v Coles Group Ltd*, the hearing officer determined that it was necessary to discuss the evidence to reach a decision, despite the confidentiality claims. The evidence indicated that while the Opponent was a US company, its products bearing the trade mark had been available to Australian customers and distribution partners since August 2013, with an official launch in Australia occurring in 2018. Despite some delays in bringing the product to market, the hearing officer found that the use of the product, specifically a probiotic defense formula, satisfied the requirement for use in respect of all the registered goods.

Consequently, the hearing officer decided that the Opponent had successfully rebutted the allegation of non-use. Accordingly, the trade mark registration was to remain on the Register for all the registered goods. The Opponent was awarded costs against the Applicant, with the hearing officer finding that an amendment to the specification of goods made after the commencement of proceedings did not significantly impact the Opponent's decision to proceed with the action.