Figgins Holdings Pty Ltd v Beltrami S.p.A

Figgins Holdings Pty Ltd applied to the Registrar of Trade Marks for the removal of trade mark number 460449, registered in the name of Beltrami S.p.A., an Italian company. The dispute concerned the registration of the trade mark "B BELTRAMI" for goods in class 25, specifically focusing on the removal of the mark in relation to "shoes". Figgins alleged that Beltrami S.p.A. had not used the trade mark in Australia, or used it in good faith, in relation to shoes for the three-year period ending 23 January 1996, as required by paragraph 92(4)(b) of the *Trade Marks Act 1995*.

The primary legal issue before the delegate of the Registrar was whether the grounds for removal under section 92(4)(b) of the *Trade Marks Act 1995* had been established. This required determining whether Beltrami S.p.A. had used the trade mark "B BELTRAMI" in Australia, or used it in good faith, in relation to shoes during the three-year period preceding the application for removal. A secondary issue was whether the Registrar should exercise discretion under section 101(3) of the Act to allow the trade mark to remain on the Register, despite the grounds for removal being established.

The delegate reasoned that the onus was on Beltrami S.p.A., as the opponent to the removal application, to rebut the allegation of non-use under section 100(1)(c) of the Act. Beltrami S.p.A. presented evidence, including declarations and exhibits, to demonstrate use of the trade mark. However, the delegate found this evidence insufficient. Advertisements in magazines and catalogues were not shown to be distributed in Australia or directed to the Australian market, and sales figures were unsubstantiated assertions. Furthermore, "Tax-free Shopping Cheques" indicated purchases made in Italy by Australian residents, not sales within Australia. Consequently, the delegate concluded that Beltrami S.p.A. had failed to meet its onus to rebut the allegation of non-use. The delegate also found no sufficient reason to exercise discretion under section 101(3) in favour of Beltrami S.p.A.

Accordingly, the delegate found that the application for removal was properly made and the grounds for removal had been established. The delegate directed that the trade mark "B BELTRAMI" be removed from the Register in respect of "shoes" and awarded costs to Figgins Holdings Pty Ltd.