Liu Cheng Hsiung v JTC Electronics Corp

This matter concerned applications for the removal of two trade mark registrations, numbers 1202287 and 2020936, from the Register of Trade Marks. The Opponent, Liu Cheng Hsiung, sought to maintain these registrations, while the Applicant sought their removal on the grounds of non-use or lack of intention to use. The proceedings were heard by Tracey Berger, Hearing Officer, in the context of the *Trade Marks Act 1995* (Cth) and the *Trade Marks Regulations 1995* (Cth).

The primary legal issues before the Hearing Officer were whether the Opponent had established an intention to use the trade mark at the time of filing for registration 2020936, and whether there had been use or authorised use of the trade mark for registration 1202287 during the relevant period. The core of the dispute revolved around whether the use of the mark by a company named JTC Tools constituted authorised use by the Opponent, as defined by the *Trade Marks Act*.

The Hearing Officer found that while there was evidence of use of the mark by JTC Tools, the Opponent had not sufficiently demonstrated that this use was authorised. Specifically, the Opponent failed to establish that he exercised the necessary quality or financial control over JTC Tools' use of the trade mark, which is a requirement for authorised use under section 8(1) of the Act. The evidence presented, including shipping documents and invoices, did not conclusively prove the requisite control, and reliance on website information was deemed inappropriate for evidentiary purposes. Consequently, the Hearing Officer concluded that the Opponent had not established his opposition to the removal applications.

Accordingly, the Hearing Officer directed that protection of registrations 1202287 and 2020936 cease one month from the date of the decision, unless an appeal was filed. The Applicant was successful in the removal applications and was awarded costs against the Opponent, with costs for registration 2020936 being reduced.