J. Choo Limited v Choo La La Pty Ltd

This matter concerned applications for the removal of registered trade marks and an opposition to the registration of a new trade mark. The parties involved were J. Choo Limited (the Opponent) and Choo La La Pty Ltd (the Applicant). The dispute arose from allegations of non-use of registered trade marks by the Applicant and an opposition by the Opponent to the registration of the Applicant's proposed trade mark, based on the Opponent's existing trade mark and reputation. The decision was made by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the Applicant's registered trade marks should be removed from the Register due to non-use, pursuant to sections 92(4)(a) and (b) of the *Trade Marks Act 1995* (Cth). Additionally, the delegate had to determine if the Opponent's grounds of opposition, specifically under regulation 4.15A and section 60 of the Act, were established, thereby preventing the registration of the Applicant's trade mark.

In relation to the removal applications, the delegate considered the evidence of use and intention to use the trade marks. The delegate found that the Opponent had rebutted the allegation of non-use for one registration (1982345), allowing it to remain registered for all its goods. However, the Opponent had not rebutted the allegation of non-use for the services covered by another registration (1710940), leading to its removal. For two other registrations (1383508 and 1759615), the Opponent had partly established its opposition, resulting in a direction for protection to remain only for amended registered goods. Regarding the opposition to the new application, the delegate found that the grounds of opposition under regulation 4.15A and section 60 were not established, and therefore, the trade mark was to proceed to registration. The delegate declined to award costs to either party, given the mixed success in the proceedings.