Invented Here B.V. v igus GmbH

This decision concerns an opposition filed by Invented Here B.V. (the Removal Opponent) against the trade mark of igus GmbH. The dispute arose from an application to remove igus GmbH's trade mark from the Register of Trade Marks on the grounds of non-use. The hearing officer was tasked with determining whether the trade mark had been genuinely used in Australia in relation to certain goods.

The primary legal issue before the hearing officer was whether the Removal Opponent had successfully demonstrated non-use of the trade mark in relation to specific goods across classes 9, 12, and 25 of the Nice Classification. This required an assessment of the evidence presented by igus GmbH to rebut the allegation of non-use. The hearing officer also had to consider the exercise of discretion regarding the extent to which protection for the trade mark should be retained or cease.

The hearing officer reasoned that while there was evidence of use for some goods, particularly in class 12, the overall use and promotion of the trade mark were limited. The public interest in the integrity of the Register was considered to outweigh the private interest in retaining protection for a broader range of goods. Consequently, the hearing officer found it unreasonable to exercise discretion to preserve the trade mark's protection for all remaining goods in classes 9, 12, and 25. However, the Removal Opponent had partially rebutted the allegation of non-use in relation to specific bicycle-related items in class 12, leading to a partial refusal to cease protection entirely.

The hearing officer directed that the relevant part of the Register of Trade Marks be amended one month from the date of the decision, with specific items struck through to indicate deletion. Provisions were made for the cessation of protection to be deferred if a notice of appeal was served before the expiry of that month, pending the outcome of any appeal. Costs were not awarded to either party, as both had achieved a measure of success.