Mae Watson v Whipl=?Iso-8859-1?Q?ash=92d_Pty_Ltd_?=

This matter concerned an application by Mae Watson (the Applicant) to remove a trade mark from the Register of Trade Marks, held by Whiplash Pty Ltd (the Opponent), on the grounds of non-use. The application was heard by Anne Makrigiorgos, a Hearing Officer and Delegate of the Registrar of Trade Marks.

The central legal issues before the court were whether the Opponent had the intention in good faith to use the trade mark in Australia, or to authorise its use, or to assign it for use, on the filing date of the registration application. Alternatively, the court had to determine whether the Opponent had used the trade mark in good faith in Australia during the relevant period, which was the period ending one month before the filing of the removal application. The onus was on the Opponent to rebut the allegations of non-use on the balance of probabilities.

The Hearing Officer considered the evidence filed by both parties, including declarations from Mae Usa Watson and Bianca Polinelli. The court applied section 92(4)(a) of the Act, which outlines the grounds for removal of a trade mark for non-use, and section 100(1)(a), which places the onus on the applicant for removal to establish the grounds. The Hearing Officer found that the difference between the trade mark as registered and the mark as used by the Opponent (Whiplash versus Whiplashed) did not substantially affect the identity of the mark and conveyed a similar impression. Consequently, the Hearing Officer was satisfied that the Opponent had used the trade mark in good faith in Australia during the relevant period.

The Hearing Officer determined that the Opponent had established its intention to use the trade mark on the filing date and had also demonstrated use of the trade mark during the relevant period. Accordingly, the application for removal of the trade mark from the Register was dismissed, and the trade mark was permitted to remain on the Register. The Hearing Officer also awarded costs against the Applicant in favour of the Opponent.