Global Electrical Supplies Pty Ltd v Internet Group d.o.o Beograd

This matter concerned an opposition by Global Electrical Supplies Pty Limited ("Opponent") to an application by Internet Group d.o.o Beograd ("Applicant") to remove the registered trade mark TESLA (number 1648569 in Class 9) from the Register of Trade Marks. The Applicant sought removal under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) on the grounds of non-use. The Opponent filed evidence of use, and the Applicant contended that use had not been established for all the goods covered by the registration. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established use of the TESLA trade mark in Australia in relation to the registered goods during the three-year period preceding the removal application, specifically the period ending on 20 August 2022. This involved determining whether any stylised versions of the mark used by the Opponent constituted use of the registered mark or a mark with additions or alterations that did not substantially affect its identity. The delegate also had to consider the scope of the Registrar's discretion under section 101 of the Act, which allows for the trade mark to remain registered for some goods even if non-use is established for others.

The delegate reasoned that the Opponent bore the onus of proving use on the balance of probabilities. The delegate found that various stylised versions of the TESLA mark, including those with the addition of "Electrical Components," were sufficiently similar to the registered mark such that their use did not substantially affect the mark's identity. This conclusion was based on an assessment of the essential features and dominant cognitive cues of the marks, drawing on established case law regarding substantial identity and minor alterations. The delegate was satisfied that the Opponent had established use of the trade mark for a broad range of electrical components, as evidenced by catalogues, sales invoices, and product packaging.

However, the delegate determined that use had not been established for specific goods, namely "electrical cable; electrical cables for connecting computers; electrical communication apparatus for transmitting data; electrical communications cables; electrical extension leads; electrical leads." Despite finding non-use for these particular goods, the delegate exercised discretion under section 101 of the Act and ordered that the trade mark TESLA remain registered for the remaining goods, which were referred to as the "Used Goods."