L & T Trading Pty Ltd v Cong Ty Co Phan Ky Nghe Thuc Pham Vietnam (Vietnam Food Industries Joint Stock Company)

This case concerned an opposition to the removal of trade mark registrations from the Register. The applicant, L & T Trading Pty Ltd, sought the removal of certain trade marks registered by Vietnam Food Industries Joint Stock Company (the opponent). The dispute centred on whether the opponent had genuinely used the trade marks in Australia in relation to the registered goods during the relevant period.

The primary legal issue before the court was whether the opponent had established use of the trade marks in Australia such that they should not be removed from the Register. This involved determining whether the use of the trade marks by the opponent, in its capacity as an agent distributing goods manufactured by the applicant, constituted use by the opponent as the proprietor of the trade marks. The court also had to consider the scope of the agency agreement between the parties and whether it permitted the opponent to use the trade marks on goods not manufactured by the applicant.

The court reasoned that the use of a trade mark by an agent on behalf of a principal, where the principal exercises quality control over the goods, is generally considered use by the principal, not the agent. The evidence indicated that the applicant was the manufacturer of the goods and that the agency agreement, while granting the opponent sole distribution rights, did not appear to grant the opponent the ability to apply the trade marks to goods produced by other entities. Furthermore, the evidence did not establish that the opponent had used the trade marks in relation to goods in Class 29. Consequently, the court found that the opponent had not established use of the trade marks in relation to all the registered goods.

The court ordered that the trade marks be removed from the Register in respect of certain goods, specifically those not used by the opponent. However, it refused to remove two of the registrations entirely, directing that the specification of goods for one registration be amended to reflect the goods for which use had been established. Each party was ordered to bear their own costs, given that both had achieved a degree of success in the proceedings.