King International Pty Ltd v Eve's Sweets Pty Ltd

This decision concerns an application by King International Pty Ltd (the Applicant) for the partial removal of a registered trade mark, "Poppy's Chocolate," from the register, sought on the grounds of non-use. The application was opposed by Eve's Sweets Pty Ltd (the Opponent), the registered owner of the trade mark. The matter came before Nicholas Smith, Hearing Officer and Delegate of the Registrar of Trade Marks.

The central legal issue before the Hearing Officer was whether the Opponent had established its opposition to the partial removal of its trade mark registration. This required the Hearing Officer to determine if the trade mark had been used in Australia in relation to the goods for which removal was sought, specifically Class 30: custard powder, during the relevant period. The Applicant sought to have the registration amended to reflect the actual use of the trade mark in the Australian market.

The Hearing Officer reasoned that the Applicant had a significant commercial interest in having its own trade mark applications assessed against the registered trade mark for a narrower range of goods that reflected its actual use. Applying the principles of trade mark law concerning non-use, the Hearing Officer concluded that this was not an appropriate case to exercise the Registrar's discretion to allow the mark to remain registered for goods for which it had not been used in the relevant period. Consequently, the Hearing Officer directed that the registration be amended to remove the goods in respect of which non-use was established.

The Hearing Officer ordered that registration 198010 be amended one month from the date of the decision to remove the "Removed Goods" (Class 30: custard powder), unless a notice of appeal was served, in which case the partial removal would be stayed pending the appeal. The Applicant was awarded costs against the Opponent.