G.P. Embleton & Company Pty Ltd v SKU Family Hold Co Pty Ltd

G.P. Embleton & Company Proprietary Limited, the registered owner of the trade mark "Stick-it" (registration number 1999386) for adhesives for floor coverings, opposed an application by SKU Family Hold Co Pty Ltd to remove the trade mark from the Register of Trade Marks under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) for non-use. The matter was determined by a delegate of the Registrar of Trade Marks based on the evidence filed by the parties.

The delegate was required to determine whether the registered owner had used the trade mark in Australia in good faith in relation to the specified goods during the three-year period ending one month before the filing of the removal application, which was 17 June 2023. The onus was on the opponent to rebut the allegation of non-use.

The delegate considered the evidence of use provided by the opponent, including sales data and product documentation. While some evidence showed the trade mark used in conjunction with other words, such as "EMBLETON ULTI-MATE STICK-IT" and "ULTI-MATE STICK-IT," the delegate found that other evidence, particularly from product packaging and safety data sheets, demonstrated the use of "STICK-IT" as a separate mark. Applying the principles for assessing substantial identity of trade marks, the delegate concluded that the use of "STICK-IT" in these instances constituted use of the registered trade mark. Consequently, the delegate was satisfied that the opponent had sold the goods under the trade mark in Australia during the relevant period.

The delegate found that the opponent had successfully rebutted the allegation of non-use and directed that trade mark registration number 1999386 remain on the Register. Costs were awarded against the applicant.