Hybrid-Ag Pty Ltd v Scrub Daddy Inc - [2023] ATMO 156

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Hybrid-Ag Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Scrub Daddy Inc for removal of trade mark number 1767019 (class 21) – Scrub Daddy – in the name of Hybrid-Ag Pty Ltd

Delegate:

Nicholas Barbey

Representation:

Opponent: Wrays Pty Ltd

Applicant: Shauna Ross of counsel instructed by Meyer West IP

Decision:

2023 ATMO 156

Trade Marks Act 1995 (Cth) – application under ss 92(4)(a) and (b) – removal sought for entire registration – evidence does not establish that the trade mark has been used in good faith during the relevant period or an obstacle to use – discretion not exercised – registration to be removed

Background

Hybrid-Ag Pty Ltd (‘Opponent’) is the owner of the following Australian trade mark registration (‘Registration’):
Trade mark:  Scrub Daddy      (‘Trade Mark’)
Registration number:  1767019
Filing date:  27 April 2016
Specification:  Class 21: artificial sponges for household purposes; sponge material for household cleaning; sponges for household cleaning; sponges for household purposes; wiping cloths for household use
(‘Registered Goods’)
On 18 June 2021, Scrub Daddy Inc (‘Applicant’) filed a non-use application based on ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’). The non-use application sought complete removal of the Registered Goods.
The Opponent filed a notice of intention to oppose the non-use application followed by a statement of grounds and particulars. In turn, the Applicant filed a notice of intention to defend the non-use application. The parties subsequently filed evidence in accordance with reg 9.16 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Applicant requested an oral hearing and filed submissions on 10 July 2023 (‘Submissions’). The Opponent did not file submissions and took no further part in this proceeding. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 17 July 2023. Shauna Ross of counsel presented submissions on the Applicant’s behalf.

Legal framework

Section 92 of the Act relevantly provides:

Application for removal of trade mark from Register etc.

(4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 156
Decision Date: 13 October 2023

CaseChat Overview and Summary

Hybrid-Ag Pty Ltd sought the removal of the entire registration of the trade mark "SCRUB DADDY" owned by Scrub Daddy Inc. The application was brought under sections 92(4)(a) and (b) of the *Trade Marks Act 1995* (Cth). The dispute concerned whether the trade mark had been used in good faith during the relevant period or if its non-use constituted an obstacle to its use.

The court was required to determine whether the evidence presented by Scrub Daddy Inc. established that the trade mark had been used in good faith during the period of non-use alleged by Hybrid-Ag Pty Ltd. Furthermore, the court had to consider whether any non-use of the trade mark presented an obstacle to its future use.

In reaching its decision, the court found that the evidence did not establish that the trade mark had been used in good faith during the relevant period. Consequently, the court determined that the non-use of the trade mark constituted an obstacle to its use. The court exercised its discretion not to preserve the registration.

The court ordered the removal of the entire registration of the trade mark "SCRUB DADDY".

Orders