Electrical Equipment Ltd v Hardie Energy Products Pty Ltd

An application was made by DUX ENGINEERS LTD for the removal of trade mark No 102764 from the Register under section 23 of the Act, on the grounds that the mark was registered without a good faith intention for use and had not been used in good faith for a continuous period of at least three years prior to the application. Notices of opposition to this application were lodged by HARDIE ENERGY PRODUCTS PTY LTD and ELECTRICAL EQUIPMENT LIMITED. The trade mark in question, DUX, is registered in respect of a range of goods including electric storage water heaters and installations for various purposes.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the applicant for removal had established a prima facie case of non-use of the trade mark DUX during the relevant three-year period preceding the application. This required the delegate to consider the evidence presented by the applicant for removal and determine if it was sufficient to shift the onus to the opponents to prove use. The delegate also considered whether the applicant was a "person aggrieved" by the registration, a threshold requirement for such an application.

The delegate reasoned that the onus rests on the applicant seeking removal to prove non-use. The evidence provided by the applicant, primarily a declaration from its managing director, was found to be insufficient. This declaration did not specifically address the relevant three-year period, nor did it contain independent evidence from the relevant trade. Furthermore, communications relied upon by the applicant did not clearly establish non-use of the mark by the registered proprietor for all goods for which it was registered, nor did they demonstrate the authority of the individuals making the statements. In contrast, evidence from the opponents indicated use of the mark on water heaters during the relevant period.

Consequently, the delegate concluded that the applicant had failed to establish a prima facie case of non-use. The application for removal of the trade mark from the Register was dismissed, and the two opponents, Hardie and EEL, were awarded their costs.