G.F.A. (Aust) Pty Ltd v Yiwu Rashel Trading CO., Ltd

This decision concerns an application by YIWU RASHEL TRADING CO., LTD (the Removal Applicant) to remove trade mark number 1854476, DR RASHEL, from the Register of Trade Marks. The trade mark is registered in the name of G.F.A. (AUST) PTY LTD (the Removal Opponent) for goods in Class 3, including cosmetics and facial masks. The Removal Applicant sought removal under sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth), alleging non-use of the trade mark. The matter was determined by a delegate of the Registrar of Trade Marks based on written submissions and evidence.

The primary legal issue before the delegate was whether the Removal Opponent had used the DR RASHEL trade mark in Australia in good faith during the three-year period preceding the Removal Applicant's application, as required by section 92(4)(b) of the Act. The Removal Opponent bore the onus of proving such use on the balance of probabilities. The delegate also considered whether any circumstances constituted an obstacle to the use of the trade mark and whether to exercise discretion to allow the trade mark to remain on the Register.

The delegate found that the evidence provided by the Removal Opponent, consisting of an internal declaration detailing stock on hand and sales figures, was insufficient to establish genuine use of the trade mark. This evidence lacked corroborating documentation such as invoices or advertising materials, and crucially, did not include photographic evidence of the trade mark applied to the products. The delegate noted that the Removal Opponent had not addressed these deficiencies despite the Removal Applicant specifically raising them. Consequently, the delegate concluded that the Removal Opponent had failed to establish use of the trade mark in good faith during the relevant period and that no obstacles to use had been demonstrated.

As the ground for removal under section 92(4)(b) was established and no basis for exercising discretion to retain the trade mark was found, the delegate directed that trade mark registration 1854476 be removed from the Register. The Removal Opponent was also ordered to pay the Removal Applicant's costs.