Glenvill Development Pty Ltd v Airbus Helicopters

Airbus Helicopters applied to the Registrar of Trade Marks for the removal of trade mark number 815418, registered in the name of Glenvill Developments Pty Ltd, from Classes 19 and 37 of the Register. The application for removal was based on grounds of non-use under subsections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth). Glenvill Developments Pty Ltd opposed the removal application, filing written submissions, while Airbus Helicopters was represented by legal counsel at the hearing.

The primary legal issue before the delegate was whether the trade mark had remained registered for a continuous period of three years ending one month before the removal application was filed, without use in Australia by the registered owner in relation to the services in Class 37. The delegate also considered whether to exercise discretion under section 101(3) of the Act to allow the trade mark to remain on the Register, even if the grounds for removal were established.

The delegate found that the relevant period for assessing non-use under section 92(4)(b) was from 10 December 2015 to 10 December 2018. While Glenvill Developments Pty Ltd asserted use of the trade mark, the evidence, specifically a declaration from its Chief Financial Officer, indicated that the company had temporarily ceased using the trade mark around 2014 to shift its focus to metropolitan construction and property development. Although Glenvill Developments Pty Ltd stated it had not abandoned the trade mark and planned to recommence use, the delegate concluded that the ground for removal under section 92(4)(b) was established for all services in Class 37, as no use had been demonstrated during the relevant period.

Despite establishing the grounds for removal, the delegate exercised discretion under section 101(3) of the Act in favour of Glenvill Developments Pty Ltd. The delegate noted that the discretion to retain a trade mark on the Register is broad and does not require the demonstration of exceptional circumstances. Considering the evidence of the trade mark's long history of use, the substantial goodwill established, and the company's intention to recommence use, the delegate decided that it was reasonable to allow the trade mark to remain on the Register for Class 37. Consequently, the application for removal was dismissed, and the trade mark was to remain registered for all goods and services.