Macteldir Pty Ltd v Dimovski & Anor

Macteldir Pty Ltd (the applicant) sought leave to appeal to the High Court of Australia against a decision of the Full Federal Court. The dispute concerned the interpretation of section 102(1) of the *Trade Marks Act 1995* (Cth), which deals with the grounds for expungement of a trade mark from the Register. The applicant sought to expunge a trade mark registered by the respondents, arguing it had been registered without a bona fide intention to use it.

The central legal issue before the High Court was whether the respondents' failure to file a declaration of use in accordance with section 94 of the *Trade Marks Act 1995* (Cth) constituted a failure to demonstrate a bona fide intention to use the trade mark at the time of registration, thereby rendering the mark liable for expungement under section 102(1). The High Court was required to determine the proper construction of "bona fide intention to use" in the context of trade mark registration and the evidentiary burden placed on applicants for registration.

Gleeson CJ and McHugh J held that the obligation to file a declaration of use under section 94 was a procedural requirement that arose *after* registration, not a condition precedent to registration. Their Honours reasoned that the absence of such a declaration did not, of itself, demonstrate a lack of bona fide intention to use the mark at the time of registration. The focus of section 102(1) was on the intention at the time of registration, and the subsequent failure to comply with procedural requirements did not retroactively negate that intention. The court therefore found that the grounds for expungement under section 102(1) were not made out.