Maestro Pty Ltd v Maestro Wireless Solutions Limited

Maestro Pty Ltd (‘the Opponent’) opposed an application by Maestro Wireless Solutions Limited (‘the Applicant’) to remove the trade mark ‘MAESTRO’ from the Register of Trade Marks in relation to Class 9 goods, specifically ‘modems and modem support equipment’. The application for removal was made under sections 92(4)(a) and (b) of the *Trade Marks Act 1995* (Cth) on the grounds of non-use. The matter was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the grounds for removal under section 92(4) had been established, and if so, whether it was reasonable to retain the trade mark on the Register under section 101 of the Act. Specifically, the delegate had to determine if the Opponent had used the trade mark in Australia in relation to ‘modems’ and ‘modem support equipment’ during the relevant periods, and if not, whether the discretion to allow the trade mark to remain registered should be exercised.

The delegate found that the Opponent had successfully rebutted the allegation of non-use in relation to ‘modems’. However, in relation to ‘modem support equipment’, the Opponent had not defined the scope of these goods, and the evidence provided, such as installation driver CDs and parts of modems, did not demonstrate use or a residual reputation. Furthermore, there was no indication of future intention to use the trade mark for this category of goods. Consequently, the delegate determined that it was not reasonable to allow the trade mark to remain registered for ‘modem support equipment’.

The delegate ordered that the trade mark ‘MAESTRO’ be removed from the Register in relation to ‘modem support equipment’ one month from the date of the decision, but it would remain registered for ‘modems’. The delegate also directed that the specification of goods would not be restricted pending any appeal.