Elan Polo Australia Pty Ltd v Blush Lingerie Inc

Elan Polo Australia Pty Ltd (the Removal Applicant) sought the removal of Blush Lingerie Inc's (the Opponent) registered trade mark from the register due to non-use. The matter was heard by Michael Kirov, delegate of the Registrar of Trade Marks. The Removal Applicant argued that the Opponent had not used the trade mark during the relevant non-use period for the goods for which it was registered. The Opponent, while not represented at the hearing, filed written submissions.

The primary legal issues before the delegate were whether the Opponent had made actual use of the trade mark during the non-use period in relation to the registered goods, and if not, whether it would be reasonable to retain the registration with a broader specification of goods, considering the Opponent's stated intentions for future use. The delegate also considered the scope of the goods for which use was claimed and the similarity of those goods to the goods the Removal Applicant was interested in, namely lingerie.

The delegate found that the Opponent had demonstrated relevant use of the trade mark during the non-use period, but only in relation to a limited range of goods: raincoats for infants and children, gumboots for infants and children, and casual shoes for women, children, and infants. The delegate was not satisfied that the Opponent had established grounds for retaining the registration with a significantly broader coverage than these goods, despite the Opponent's stated intentions to expand its product range to include items such as lingerie. The delegate noted that the goods for which use was proven were sufficiently different from lingerie to obviate a significant risk of confusion.

Consequently, the delegate directed that the specification of goods for registration 893875 be amended to reflect only those goods for which use had been proven. The amendment was to be made after twenty-eight days from the decision date, to allow for any potential appeal. As the Opponent was only partially successful, no award of costs was made.