Habitat Holding BV v KMM Enterprises Pty Ltd

This matter concerned an application by KMM Enterprises Pty Ltd for the removal of certain trade mark registrations held by Habitat Holding BV from the register due to non-use. The application was heard by Alison Windsor, a delegate of the Registrar, in Sydney. KMM Enterprises Pty Ltd did not attend the hearing but provided written submissions, while Habitat Holding BV was represented by Trevor Stevens.

The primary legal issues before the delegate were whether to grant Habitat Holding BV leave to serve further evidence, and if so, whether the trade marks should be removed from the register due to non-use. Habitat Holding BV sought to introduce evidence relating to advertisements and invoices for its goods, arguing it was relevant to the Registrar's discretion under subsection 101(3) of the Act, which allows for trade marks to remain on the register even if grounds for removal are established, if it is reasonable to do so. KMM Enterprises Pty Ltd objected to the late filing of this evidence, characterising it as an ambush.

In determining the admissibility of the further evidence, the delegate applied a three-factor test: whether the evidence could have been obtained with reasonable diligence, whether it would likely influence the result, and whether it was credible. While the evidence was found to be credible, the delegate determined that it could have been obtained earlier with reasonable diligence and, crucially, was unlikely to have a significant effect on the decision as the material post-dated the relevant non-use period by at least 12 months. Consequently, the delegate found no reason to exercise discretion in favour of Habitat Holding BV.

The delegate found that KMM Enterprises Pty Ltd's application for removal was properly made and that Habitat Holding BV had failed to rebut the application. Accordingly, the delegate directed that the specified trade mark registrations be removed from the register within one month, subject to any appeal. Habitat Holding BV was also ordered to pay KMM Enterprises Pty Ltd's costs.