John Toh v Paris Croissant Co. Ltd

This matter concerned an application for the removal of the trade mark "Paris Baguette" from the Register under sections 92(4)(a) and 92(4)(b) of the *Trade Marks Act 1995* (Cth). The applicant for removal was Paris Croissant Co. Ltd, and the opponent to the removal action was John Toh. The hearing was conducted by Heath Wilson, a delegate of the Registrar, on 7 May 2010.

The legal issues before the delegate were whether the trade mark had been used in Australia in good faith by the registered owner, or whether it had remained registered for a continuous period of three years ending one month before the application for removal was filed, without use in Australia in good faith. The delegate noted that the removal applicant initially pursued grounds under section 92(4)(a) concerning the intention to use the trade mark at the time of filing, but ultimately focused on the application for removal under section 92(4)(b) relating to non-use.

The delegate considered the evidence presented by Mr. Toh, which included statements about resuming efforts to establish the business and continuing plans for use and advertising. However, the delegate found that these statements, coupled with a lack of sales figures or invoices, indicated that trading had not commenced. While preparatory dealings can constitute use if coupled with an existing intention to offer services, the delegate found that the evidence, including registration of a business name, stationery, trial use of a coffee machine, and an advertising campaign involving a car, did not demonstrate an objective commitment to using the trade mark in the course of trade. The delegate concluded that these actions amounted to no more than preliminary discussions and negotiations.

Consequently, the delegate found that the removal opponent had not discharged the onus of establishing any bona fide use of the trade mark in the relevant period for the services of providing food and drink. Accordingly, the non-use application was successful, and the delegate directed that the trade mark registration no. 770083 "Paris Baguette" be removed from the Trade Marks Register for all services one month from the date of the decision, with costs awarded against the removal opponent.