Jaden Marketing Pty Ltd v Frederick Briggs and Ronald John Madsen

This matter concerns an application by Jaden Marketing Pty Ltd for the removal of trade mark registration number A453291, registered in the name of Six Wheeler Conversions Pty Ltd, from the Register. The application was brought under section 23 of the relevant Act on the grounds that for a continuous period of not less than three years, the trade mark had been registered but not used in good faith by the registered proprietor or a registered user. The relevant period for consideration was from 9 May 1989 to 5 May 1992. Frederick Briggs and Ronald John Madsen lodged a notice of opposition to this application.

The primary legal issue before the Delegate of the Registrar of Trade Marks was whether the trade mark registration should be removed from the Register due to non-use. Specifically, the Delegate had to determine if the grounds for removal under section 23 were made out, and if so, whether there were compelling circumstances to exercise discretion to dismiss the application for removal and allow the registration to remain. A secondary issue involved the proper application of section 20 of the Act concerning the recording of assignments of trade marks.

The Delegate found that it was uncontested that the registered proprietor at the time, Riga'l Universal Loaders Pty Ltd, did not use the trade mark during the relevant period. While the opponents argued that use by Deveson Jahn (a subsequent holder of the mark) and by Six Wheeler (the current registered proprietor) constituted sufficient use to warrant the exercise of discretion, the Delegate was not satisfied. The Delegate reasoned that the use by Six Wheeler prior to its assignment in March 1993 was not under the authority of the owner of the mark. Furthermore, the Delegate found that the circumstances of use did not demonstrate a public interest in preserving the registration or an unimpeached title to the mark, distinguishing the present case from precedents like *Hermes* Trade Mark and *Paragon Shoes Pty Ltd v Paragini Distributors (N.S.W.) Pty Ltd*.

Consequently, the Delegate concluded that the grounds for removal under section 23 were made out and that the circumstances did not justify the exercise of discretion to dismiss the application. The Delegate directed that registration number 453291 be removed from the Register in respect of all goods for which it was registered and awarded costs to the applicant.