Horizons (Asia) Pty Ltd v Enagic Australia Pty Ltd and Enagic Co., Ltd

This decision concerns an application for removal of a trade mark from the Register, brought by Horizons (Asia) Pty Ltd against Enagic Australia Pty Ltd and Enagic Co., Ltd. The dispute centres on whether the trade mark had been used in Australia in relation to the registered goods during a relevant period. The matter was heard by Michael Kirov.

The court was required to determine whether the evidence presented by the opponent, Enagic, constituted sufficient proof of use of the trade mark in Australia in the course of trade. Specifically, the court had to consider the admissibility and weight of an invoice presented as evidence of a sale, and whether this single instance, if accepted, met the threshold of "overwhelmingly convincing proof" of use as a trade mark in Australia.

The court acknowledged that while the rules of evidence are relaxed in trade mark opposition proceedings, the evidence submitted in reply should generally be limited to issues raised in the evidence in answer. Despite finding that the bulk of the evidence was not properly evidence in reply, the court elected to consider a specific invoice. However, the court reasoned that the invoice, which was made out to a Hong Kong company and indicated shipment to Hong Kong, did not demonstrate use of the trade mark in Australia or in the course of trade in the required sense. The court found that the invoice, along with the lack of any other corroborating evidence such as Australian customer invoices, advertising, or sales revenue, fell far short of the "overwhelmingly convincing proof" necessary to establish use of the trade mark in Australia.

Consequently, the court found that the opponent had not satisfied the onus of demonstrating use of the trade mark in Australia in relation to the registered goods during the relevant period.