Maccounting Pty Ltd T/a Success Tax Professionals Morley v TOHJO Co., Ltd

This matter concerned an opposition by Maccounting Pty Ltd T/a Success Tax Professionals Morley to an application by TOHJO Co., Ltd. for the removal of two trade marks, registration numbers 2240567 and 2240568, both bearing the mark "Miau" and registered in the name of Wei Perth Media Group Pty Ltd. The applications for removal were brought under section 92 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the Hearing Officer was whether the registered owner of the trade marks had used them in Australia in relation to the registered goods. The court was required to consider the principles of trade mark use as recently summarised by the High Court in *Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd*, which distinguishes between the use of a sign in relation to goods and its use as a trade mark, emphasising an objective assessment of the sign's purpose as a badge of origin.

The Hearing Officer found that the evidence presented by the Opponent, specifically an undated project proposal titled ‘Project Overview & App Substantiation. Miau & MiauMall – Your Local Lifestyle App’, lacked any connection to the registered owner of the trade marks. There was no explanation of the declarant's relationship to the owner or the project plan's relevance to the owner. In contrast, the Removal Applicant provided uncontested evidence demonstrating their own use of the trade marks. Crucially, the Opponent made no submissions regarding the exercise of discretion not to remove the trade marks.

Consequently, the Hearing Officer determined that the Opponent had not established its opposition to the removal applications. The registrations for trade marks 2240567 and 2240568 were directed to be removed from the Register one month from the date of the decision, with provisions for a stay pending any appeal. The Opponent was also ordered to pay the Applicant's costs.