HS TM, LLC v Schein Orthopadie-Service KG

This decision concerns an application by HS TM, LLC (the Removal Applicant) to remove two trade mark registrations owned by Schein Orthopadie-Service KG (the Opponent) from the Register of Trade Marks. The dispute centred on whether the Opponent had used the trade marks in Australia during the relevant period for the goods for which they were registered. The hearing officer, Michael Kirov, considered the applications for removal under section 92(4)(b) of the relevant Act.

The primary legal issues before the hearing officer were whether the Opponent had used its trade marks in Australia for goods falling within the broad descriptions of the registrations, and if not, whether the Registrar's discretion should be exercised to allow the registrations to remain unamended. Specifically, the hearing officer had to determine if the Opponent had demonstrated use of the trade mark in Class 5 for "Pharmaceutical and veterinary preparations", "Sanitary preparations for medical purposes", "Plasters", "Materials for dressings", "Material for stopping teeth, dental wax", and "Disinfectants", and in Class 10 for "Surgical, medical, dental and veterinary apparatus and instruments" and "orthopaedic casting tape".

The hearing officer found that the Opponent had indeed used the trade marks in Australia during the relevant period for goods falling within these specified broad descriptions. While the applications for removal were therefore successful in principle to the extent that the registrations covered goods beyond these categories, the hearing officer exercised the Registrar's discretion under section 101(3) of the Act in favour of the Opponent. This discretion was exercised because there was no evidence or persuasive submission from the Removal Applicant demonstrating why it would be against its interests or otherwise unreasonable to allow the registrations to remain unamended, given the extensive use of the trade marks and their variants featuring the "HENRY SCHEIN" name in Australia over many years.

Consequently, the hearing officer ordered that the registrations should remain unamended. In relation to costs, as both parties achieved partial success and the ultimate decision to leave the registrations unamended relied on the exercise of discretion, the hearing officer determined it appropriate for each party to bear its own costs.