John Fairfax Publications Pty Ltd v Eastern Herald Publishing Company Pty Ltd

John Fairfax Publications Pty Ltd (the applicant) sought to have certain trade mark registrations removed from the Register. The dispute concerned whether the applicant qualified as a "person aggrieved" and whether the grounds for removal under section 92(4)(a) of the *Trade Marks Act 1995* (Cth) were satisfied. The matter was heard by Jock McDonagh, a Hearing Officer of the Trade Marks Hearings.

The primary legal issues before the Hearing Officer were whether the applicant was a "person aggrieved" within the meaning of section 92(1) of the Act, which is a threshold requirement for removal applications, and whether the applicant had established the grounds for removal under section 92(4)(a). The applicant's standing as a person aggrieved was contested by the opponent.

The Hearing Officer considered the evidence, including declarations detailing the applicant's attempt to sell its trade mark applications and registrations to the opponent shortly before its liquidation, and the opponent's extensive use of similar marks in connection with its publications. Applying the principles established in cases such as *Ritz Hotel v Charles of the Ritz*, the Hearing Officer noted that a "person aggrieved" is one with a real interest in having the Register rectified and who would be appreciably disadvantaged by the register remaining unrectified. However, the Hearing Officer found that the applicant had failed to provide sufficient evidence to establish it was a person aggrieved, particularly in light of its impending liquidation and its prior attempts to divest itself of the trade marks. The Hearing Officer also referred to the principle that the filing of an application for registration does not, in itself, infer an intention to use the mark.

Consequently, the Hearing Officer refused the application for removal, finding that the applicant had not demonstrated the necessary standing to bring the application.