Futurity Pty Ltd v Futurity Investment Group Pty Ltd

Futurity Pty Ltd (the Opponent) opposed an application by Futurity Investment Group Pty Ltd (the Applicant) to remove trade mark number 1030987, registered in the name of Futurity Pty Ltd, from the Register of Trade Marks. The application for removal was made under section 92 of the *Trade Marks Act 1995* (Cth) on the grounds of non-use. The matter was heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established use of the trade mark "FUTURITY" in Australia during the relevant three-year period preceding the application for removal, as required by section 92(4)(b) of the Act. The onus was on the Opponent to rebut the allegation of non-use, as stipulated by section 100 of the Act.

The delegate reasoned that the Opponent had not demonstrated use or intention to use the trade mark in relation to certain specified services (the "Unused Services"). While the Opponent had used the trade mark in relation to other services (the "Used Services"), the delegate considered that retaining the registration for the Unused Services would not serve the public interest in the integrity of the Register. The delegate concluded that the Opponent had partly established its opposition, and therefore, the trade mark should not be removed entirely but should be amended to exclude the Unused Services. Each party was directed to bear their own costs, given the partial success of both parties.