Mae Watson

This matter concerned an application by Mae Watson (the Applicant) to remove a trade mark from the Register for non-use, pursuant to Part 9 of the Act. The Opponent, the registered owner of the trade mark, sought to retain the registration. The decision was made by Anne Makrigiorgos, Hearing Officer and Delegate of the Registrar of Trade Marks, based on written submissions and evidence filed by the parties.

The primary legal issue before the court was whether the Opponent had used the trade mark in Australia in good faith during the three-year period ending one month before the filing of the non-use application (the Relevant Period). Specifically, the court had to determine if the Opponent had discharged the onus of rebutting the allegation of non-use by establishing, on the balance of probabilities, that the trade mark had been used in good faith in relation to the specified services, or if there were circumstances constituting an obstacle to such use during the Relevant Period.

The Hearing Officer applied section 92(4)(b) of the Act, which outlines the grounds for removal of a trade mark for non-use. The relevant period for establishing use was the three years ending 18 April 2023. The Hearing Officer was satisfied, based on the evidence presented by the Opponent, that the trade mark had indeed been used in good faith in Australia during the Relevant Period for the registered services. Consequently, the Hearing Officer determined that section 102 of the Act, which allows for the imposition of conditions or limitations on registration, was not triggered.

Accordingly, the Hearing Officer ordered that the trade mark Registration 2007748 remain on the Register unamended. Furthermore, the Hearing Officer awarded costs against the Applicant in favour of the Opponent, following the general rule that costs follow the event.