Jianqing Ltd v Linhope International Limited

This matter concerned an application by Jianqing Ltd (the Removal Applicant) to remove a trade mark registered to Linhope International Limited (the Removal Opponent) from the Register. The Removal Applicant sought removal under section 92(4)(a) of the *Trade Marks Act 1995* (Cth), arguing that the Removal Opponent's use of the mark on the registered goods was effectively disqualified due to its character.

The central legal issue before the Delegate of the Registrar of Trade Marks was whether the Delegate had the mandate under section 92 of the *Trade Marks Act 1995* to determine the character of the Removal Opponent's use of the trade mark. The Removal Applicant contended that such an approach would encourage parties to resolve trade mark disputes through applications to the Registrar, rather than more expensive litigation in the Federal Court.

The Delegate reasoned that the established practice of the Trade Marks Office, supported by case law, is that the Registrar does not have the authority to determine such issues under section 92. The Delegate referred to the decision in *Edwards*, which indicated that courts discourage the use of section 92 for purposes other than the removal of unused trade marks. The Delegate found that section 92 was not apt to raise the real issue between the parties in this case, and that parties should not be encouraged to bring inapposite claims simply because they are cheaper, as this can lead to increased costs if the claim backfires.

The Removal Applicant's application for removal was unsuccessful. Accordingly, the Delegate directed that the trade mark registration was to remain on the Register for all registered goods. No award of costs was made as the Removal Opponent had not requested them.