Mahoney and Somaia Pty Ltd v Melanie Jackson

[2023] ATMO 218

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Mahoney and Somaia Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Melanie Jackson to remove trade mark number 1020641 (class 24) - MINIKINS - in the name of Mahoney and Somaia Pty Ltd

Delegate:

Sheona Robertson

Representation:

Removal Opponent: Davies Collison Cave Pty Ltd

Removal Applicant: Self-represented

Decision:

2023 ATMO 218

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(b) – no use established – discretion not exercised – trade mark to be removed

Background

1. On 6 January 2022 Melanie Jackson (‘Removal Applicant’) filed an application for removal of the following trade mark from the Australian Register of Trade Marks (‘Register’) for non-use based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’).

Trade mark:	MINIKINS (‘Trade Mark’)
Registration number:	1020641
Filing date:	14 September 2004
Goods:	Class 24: For all textiles and textile goods, not included in other classes, bath towels, beach towels, novelty towels, bed linen, blankets (‘Registered Goods’)

1. The removal application sought removal of all of the Registered Goods.

2. Mahoney and Somaia Pty Ltd (‘Removal Opponent’) filed a notice of intention to oppose the removal application, followed by a statement of grounds and particulars (‘SGP’). The Removal Applicant subsequently filed a notice of intention to defend the removal application.

3. The Removal Opponent filed the following evidence in support:

• Declaration made on 2 September 2022 by Naresh Raja (‘Mr Raja’), a director of the Removal Opponent, and Exhibits A1 to A2, B1 to B6 and Confidential Exhibit B7 (‘Raja 1’).

1. The Removal Applicant filed the following evidence in answer:

• Declaration made on 10 September 2022 by the Removal Applicant, and Attachments A to H (‘Jackson Declaration’).

1. The Removal Opponent filed the following evidence in reply:

• Declaration made on 14 November 2022 by Mr Raja, and Exhibit A1, Confidential Exhibits B1 to B2, Exhibits C1 to C2, Confidential Exhibits C3 and C4, and Exhibit D1 (‘Raja 2’).

1. Both Raja 1 and Raja 2 contain clauses to the effect that information contained within those declarations is regarded as confidential. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1] Arguably, there are sensitive commercial matters in these declarations which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the extent necessary to provide sensible reasons for my decision.

   [1] [2008] ATMO 17.

2. An oral hearing was requested. Neither party filed any written submissions. As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 19 October 2023. The Removal Applicant was self-represented at the hearing. The Removal Opponent did not attend the hearing.

Evidence

Removal Opponent’s evidence

1. The Removal Opponent was registered as a company in 1980. The Removal Opponent is declared to be part of a corporate group (‘Simba Group’) which includes, amongst others, Simba Global Pty Ltd (‘Simba Global’).

2. The MINIKINS brand was developed for “a line of textile goods including towels, bed linen, blankets, and accessories for families and children in particular”.[2] MINIKINS products have been offered for sale through a number of retailers including Catch, Bunnings, KG Superstore and Myer.

   [2] Raja 1, [8].

3. Confidential Exhibit B1 to Raja 2 contains invoices issued:

• by an entity trading as ‘Domtex Australia’, to third party retailers between September 2012 and August 2015; and

• by Simba Retail Pty Ltd (‘Simba Retail’), another company within the Simba Group, to third party retailers between May and June 2022.

1. These invoices contain references to MINIKINS branded products, products bearing other brands belonging to the Simba Group, such as “Sheraton” or “Morrissey”, as well as more generic product descriptions such as “hooded bath towel owl pink” or “embroidered bath towel apples white”.

2. Confidential Exhibit B2 to Raja 2 contains records of sales through third party retailers between May 2012 and October 2015. It is declared that these sales pertain to MINIKINS branded goods, however there is nothing in the records themselves to identify the particular goods sold.

3. It is declared in Raja 1 that the Simba Group has also entered into a partnership with Coles supermarkets as well as negotiations for a distributorship agreement with online retailer Catch to distribute MINIKINS goods, though no further information regarding these arrangements are provided and it is not clear what, if any, commercial activity has resulted from these arrangements.

4. Raja 1 contains some examples of use of the Trade Mark on the website marketing materials and product packaging. These materials are either undated or dated in 2022, which appears to have been the year in which new MINIKINS branding was launched.

5. Confidential Exhibit B7 to Raja 1 contains a list of product sales for the 2022 MINIKINS collection. The date range for these product sales has not been specified and it is not clear whether these products sales are limited to Australia only.

6. In 2021 the Removal Opponent prepared a refresh of the MINIKINS brand including new “artwork, packaging concepts and brand presentations”.[3] Exhibit C1 to Raja 2 contains a presentation, created on 31 August 2021, demonstrating the icons, word marks, characters and typefaces associated with the updated branding. It is declared that this presentation was delivered to representatives of Catch “in approx. 2021”.[4] Confidential Exhibit C3 to Raja 2 contains copies of email correspondence between “Simba Global” and a buyer from Catch dated March 2022.

   [3] Raja 2, [12].

   [4] Ibid [16].

7. It is declared that the MINIKINS brand was introduced to representatives of online retailer MyDeal in October 2021. Correspondence ensued between a Product Manager working within the Simba Group and MyDeal regarding a number of products, including the MINIKINS branded products. Confidential Exhibit C4 to Raja 2 contains copies of such emails, dated between November 2021 and February 2022, as well as a price list for several Simba Group products including MINIKINS branded products.

8. Google searches for the term ‘minkins australia’ conducted by the Removal Opponent, limited to results dated prior to 30 September 2021, appear to include two references to the Removal Opponent’s MINIKINS branded products, dated July 2016 and June 2017 respectively.

Removal Applicant’s evidence

1. The Jackson Declaration disputes some of the statements and evidence contained in Raja 1, including the Removal Opponent’s claims that MINIKINS branded products had been sold at Myer stores within the past 7 years, and that the Removal Opponent has been selling to multiple individual retailers as opposed to a single drop-shipping agent.

2. The Removal Applicant declares that they conducted “extensive research into the AU market and the brand names selling children’s apparel”[5] prior to filing Australian trade mark application number 2215137 for the fancy word mark ‘MINKINS’ in respect of “baby buntings” in class 24.

   [5] Jackson Declaration, [8].

Discussion

1. Section 92 of the Act relevantly provides:

(4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)…

(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)   used the trade mark in Australia; or

(ii)    used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. Since the Trade Mark was filed prior to 24 February 2019, I note that an application for removal under s 92(4)(b) may only be made after a period of five years has passed from the filing date of the application.[6] I confirm that the filing date of the Trade Mark is more than five years prior to the filing date of the Removal Application.

   [6] See Act s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) ss 45-46.

2. For the purposes of s 92(4)(b) of the Act, the period in which the Removal Opponent must establish use of the Trade Mark in good faith is the three-year period ending on 6 December 2021 (‘Relevant Period’).

3. The Removal Opponent bears the burden of rebutting the non-use allegation.[7] Section 100 of the Act relevantly provides:

4. For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a)    the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or

   (b)    in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and

   (ii)the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c)     the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   [7] Act s 100(1)(c).

5. The standard of proof required is the ordinary civil standard, being on the balance of probabilities.[8]

   [8] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) albeit in respect of an action opposing registration rather than removal.

Use of the Trade Mark during the Relevant Period

1. Use of a trade mark ‘in good faith’ is to be understood as use that is “real, as opposed to token, use in a commercial sense”.[9] Provided the use is in good faith, a single bona fide use of the Trade Mark in the course of trade during the Relevant Period may be sufficient to rebut the allegation under s 92(4)(b) of the Act,[10] but if a single act of use is relied upon then it should be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”.[11]

   [9] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [16] (Drummond J)

   [10] Ibid [17].

   [11] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

2. The ‘use’ required to be demonstrated is ‘use as a trade mark’, that is, use of the sign as a badge of origin to indicate a connection in the course of trade between the goods and the person applying the sign to, or in relation to, the goods.[12] Use ‘in the course of trade’ means either an actual dealing in the goods, an offer for sale of the goods, or an intention to offer the goods for sale evidenced by preparatory steps demonstrating an objective commitment to use the trade mark.[13]

   [12] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

   [13] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 415, 433-434 (Deane J); Winton Shire Council v Lomas (2002) FCA 288, [36] (Spender J).

3. The only evidence of use of the Trade Mark (or a trade mark with additions or alterations not substantially affecting the identity) which is attributable to the Relevant Period is:

• the brand refresh presentation referred to in paragraph [17] of this decision; and

• email correspondence between a Simba Group Product Manager and MyDeal, referred to in paragraph [18] of this decision.

1. The above evidence is limited to quilt cover sets, fitted bedsheets, cushions, throws, bath towels and bath mats.

2. I am not satisfied that the evidence establishes that there was any other use of the Trade Mark during the Relevant Period.

3. The materials referred to above all suffer the same deficiency; namely, that they bear no obvious link to the Removal Opponent which was the registered owner of the Trade Mark during the Relevant Period.

4. I note some of the invoices contained in Confidential Exhibit B1 to Raja 2 bear a ‘SIMBA GLOBAL’ logo including a lion head device. The payee listed on the invoices is Simba Retail, and the invoices include an email address with the domain ‘simba.global’. Of the materials referred to in paragraph [29] above, the first page of the brand refresh presentation bears the same lion head device, and the sender of the emails to MyDeal uses an email signature featuring a similar ‘SIMBA GLOBAL’ logo and has an email address which includes the ‘simba.global’ domain. Although it is not possible to discern the exact corporate identity of the user of the Trade Mark in the materials listed in paragraph [29] above, having regard to the evidence as a whole it is more likely than not that they ought to be attributed to Simba Retail trading as ‘Simba Global’, or by Simba Global, and not the Removal Opponent.

5. As the relevant evidence of use is not directly attributable to the Removal Opponent, the next question is whether the use is by an authorised user within the meaning of the Act.

Authorised use of the Trade Mark

1. Use of the Trade Mark by an authorised user is taken to be use of the Trade Mark by the Removal Opponent.[14] Section 8 of the Act relevantly provides:

   [14] Act s 7(3).

2. A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

3. The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

4. If the owner of a trade mark exercises quality control over goods or services:

   (a)    dealt with or provided in the course of trade by another person; and

   (b)    in relation to which the trade mark is used;

   (c)     the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

5. If:

   (a)    a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

   (b)    the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

6. Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

7. Control is a fundamental aspect of authorised use. Determination of actual control is “a question of fact and degree”.[15] It is clear from the wording of s 8(5) of the Act that ‘quality control’ and ‘financial control’ are non-exhaustive examples of the types of control required to establish authorised use.

   [15] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, [98] (Besanko J) (‘Lodestar’).

8. In Trident Seafoods Corporation v Trident Foods Pty Limited (‘Trident’), the company that owned the trade mark was a wholly owned subsidiary of the company that used the trade mark. Given the corporate relationship between the entities, their common directors and shared processes, evidence of actual control over use of the trade mark was not required. As stated by the Full Court:

   The issue is not whether one company controlled the other but rather whether [the trade mark owner], even though a wholly owned subsidiary of [the trade mark user], had control over [the trade mark user’s] use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose.[16]

   [16] [2019] FCAFC 100, [45] (Reeves, Jagot and Rangiah JJ).

9. The evidence before the Full Court in Trident rendered examples of actual control unnecessary, because a ‘unity of purpose’ indicating the existence of actual control could be inferred from the corporate relationship between the owner and user of the trade mark, their common directors and their shared processes. It is clear from the outcome in Trident that the nature of the evidence provided is critical to establishing the existence of actual control.

10. The primary issue for determination is whether the Removal Opponent exercised control over the use of the Trade Mark by another entity within the Simba Group during the Relevant Period so as to maintain a connection in the course of trade between the Registered Goods and the Removal Opponent.[17]

    [17] Lodestar (n 16) [183] (Katzmann J).

11. The Removal Opponent is declared to be “part of the Simba corporate group” which also includes Simba Retail, Simba Global and Domtex Australia Pty Ltd (‘Domtex’). The Removal Opponent has provided company extracts for each of these entities from the records of the Australian Securities & Investments Commission (‘ASIC’). It is apparent from these extracts that:

• the Removal Opponent shares three of its five directors in common with Simba Global (which has five directors in total), two directors in common with Simba Retail (which has four directors in total), and four directors in common with Domtex. The shared directors are members of the Somaia family;

• the Removal Opponent is jointly owned by four members of the Somaia family. The same individuals are also directors of the Removal Opponent;

• The Removal Opponent and Domtex share the same registered business address. Simba Global and Simba Retail share a different business address; and

• Simba Retail is a wholly owned subsidiary of Simba Global.

1. The mere fact that the entities belong to the same corporate group is not, in itself, sufficient to give rise to the assumption that the entities operated with unity of purpose. The evidence before me does not sufficiently explain the relationship between the Removal Opponent and other entities within the Simba Group. Raja 1 contains a statement that “[a]ll companies in the Simba Group, including [the Removal Opponent], operate with unity of purpose, namely to develop and manufacture textile products and provide related procurement, logistics and quality assurance services”.[18] In the absence of further detail or documentary evidence, this statement rises no higher than mere assertion.  

   [18] Raja 1, [7].

2. It is evident from the ASIC extracts that the entities within the Simba Group have multiple directors and that the directorships and shareholdings differ between each entity. The mere fact that the Removal Opponent shares some directors in common with other entities within the Simba Group is not, on its own, sufficient for me to conclude that the entities within the Simba Group using the Trade Mark were under the control of the Removal Opponent to the extent that it can be established that the respective entities acted with unity of purpose. In this regard, this matter can be distinguished from Trident where there was no ambiguity regarding the common directorships and common purposes of the relevant entities.

3. The evidence contains a broad statement the Simba Group is “owned and controlled by members of the Somaia family”.[19] No evidence is provided regarding the closeness of the connection between these family members, or what, if any, bearing their family relationship has on the operations of the respective companies.

   [19] Ibid [6].

1. Regarding actual control by the Removal Opponent over use of the Trade Mark, the evidence is silent as to the actions undertaken by the Removal Opponent to exercise control over use of the Trade Mark by other entities within the Simba Group. No reference is made to any licence between the Removal Opponent and any other entity within the Simba Group, nor is there anything in the evidence to suggest that any entities within the Simba Group have altered their business practices on the instructions of the Removal Opponent. There are no corporate guidelines, shared business processes or records of interactions which would support an inference of actual control by the Removal Opponent. Accordingly, I am not able to determine that the Removal Opponent has exercised actual control over the provision of goods bearing the Trade Mark at any stage.

2. I am not satisfied that either Simba Global or Simba Retail, being the entities within the Simba Group with a plausible link to the demonstrated use of the Trade Mark during the Relevant Period, are authorised users of the Trade Mark as contemplated by s 8 of the Act.

3. It is possible that there is a sufficient nexus of control between Simba Global and Simba Retail, such that use of the Trade Mark by Simba Retail may be attributable to Simba Global. I note in this regard that the Removal Opponent filed a request for a full assignment of the Trade Mark on 6 November 2023, being after the hearing date. The Deed of Assignment (‘Deed’) attached to this request assigns the Trade Mark and several other trade mark registrations from the Removal Opponent to Simba Global. It is stated in the Deed that, as of the 3 November 2023 date of the Deed, the Removal Opponent was the legal and beneficial owner of the Trade Mark. In my view, the timing of the Deed is not insignificant. Had Simba Global intended to claim any right, title or interest in the Trade Mark during the Relevant Period for the purpose of the removal application, the Deed ought to have been executed and filed with the Registrar at a much earlier stage, or alternatively the Deed ought to reflect that Simba Global’s rights, title and interest in the Trade Mark were effective during the Relevant Period. I would also expect the Removal Opponent to have filed evidence or made written or oral submissions in support of Simba Global’s rights in respect of the Trade Mark. As it stands, the Deed does not affect my conclusion that the Trade Mark has not been used by the Trade Mark owner or an authorised user during the Relevant Period.

4. Accordingly, I am not satisfied that the Removal Opponent has used the Trade Mark for the Registered Goods during the Relevant Period.

Obstacles to use

1. The Removal Opponent does not formally submit that there have been obstacles to use of the Trade Mark for the Registered Goods during the Relevant Period. For completeness, I note that Raja 2 contains a reference to a potential obstacle, namely that the COVID-19 pandemic created an uncertain business climate. However, the Removal Opponent does not state that this circumstance prevented use of the Trade Mark altogether. Rather, it is declared that the Removal Opponent “chose to focus on preparatory activities in anticipation of retailing the MINIKINS goods when market conditions stabilised”,[20] namely, the activities referred to in paragraphs [17] and [18] of this decision.

   [20] Raja 2, [11].

2. I am not satisfied that it has been established that there was an obstacle to use of the Trade Mark by the Removal Opponent during the Relevant Period. Therefore, it is necessary for me to consider whether I should exercise my discretion to allow the Trade Mark to remain on the Register in respect of any of the Registered Goods.

Registrar’s discretion

1. The Act provides the Registrar with a broad discretion not to remove the Trade Mark from the Register in respect of any, or all, of the goods for which removal has been sought.[21] If satisfied that it is reasonable to do so, the Registrar may decide that the Trade Mark should not be removed from the Register, even if the ground on which the removal application was made has been established.[22]

   [21] Act s 101(3).

   [22] Ibid.

2. The exercise of discretion is not one that should be exercised lightly. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[23]

   [23] [2002] FSR 51 (Ch) 790, [19(a)].

3. In order to exercise the discretion in s 101(3), the Removal Opponent bears the onus of persuading me that it is reasonable that the Trade Mark should not be removed.[24]

   [24] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ); Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

4. Having regard to the integrity of the Register, a decision to exercise the discretion is guided by the public interest, although the private commercial interests of the relevant parties also need to be recognised.[25]

   [25] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (Flick J).

5. The Removal Opponent submits in the SGP that the exercise of discretion should be made on the following grounds.

6. Firstly, the Removal Opponent submits that the Trade Mark, or a trade mark with additions or alterations not substantially affecting the identity of the Trade Mark has been used within the Relevant Period on goods of the same description as the Registered Goods. For the reasons discussed in [29] to [33] and [40] to [46] of this decision, I am not persuaded that the Trade Mark has been used by the Removal Opponent or an authorised user during the Relevant Period.

7. Alternatively, the Removal Opponent submits that the Trade Mark, or a trade mark with additions or alterations not substantially affecting the identity of the Trade Mark has been used before and after the Relevant Period on goods of the same description as the Registered Goods. I am satisfied that the Registered Goods have been offered for sale before and after the Relevant Period. The evidence includes printouts from Australian third-party retailer websites offering MINIKINS branded quilt cover sets, fitted sheets, cushions, throws, bath mats, mattress protectors and children’s beach and bath towels for sale. The evidence also includes invoices dated before and after the Relevant Period confirming sales of MINIKINS branded products, and a price list for MINIKINS branded products sent via email to MyDeal after the Relevant Period. Use outside of the Relevant Period may be relevant to an intention to use the Trade Mark, but for the reasons discussed in paragraphs [40] to [46] of this decision, the evidence does not demonstrate that use of the Trade Mark is attributable to the Removal Opponent or an authorised user. The Removal Opponent’s use of the Trade Mark before or after the Relevant Period is not substantiated by the evidence provided.

8. The Removal Opponent also submits that the reputation in the Trade Mark and other trade marks with additions or alterations not substantially affecting the identity of the Trade Mark means that the unauthorised use of the same or a similar trade mark by another person in respect of the Registered Goods is likely to cause confusion. While the evidence does establish that there has been some use of the Trade Mark outside of the Relevant Period, it does not establish that there was widespread publicity or significant sales of MINIKINS branded products prior to, during or after the Relevant Period. I am not satisfied that the Trade Mark had such a reputation that the removal of the Trade Mark for the Registered Goods would result in consumer confusion. 

9. The Removal Opponent also claims that its private interests in maintaining the registration of the Trade Mark outweigh the private interests of the Removal Applicant in having the registration removed. The Removal Opponent has not provided any submissions in support of this claim. On the other hand, the Removal Applicant has indicated their commitment to their own MINKINS brand. The Removal Applicant claims this intention is demonstrated by their investment in their MINKINS brand and their store of unused inventory of MINKINS branded products owing to the uncertainty created by the maintenance of the Trade Mark on the Register. Absent any further detail in support of the Removal Opponent’s case, I am not persuaded that the interests of the Removal Applicant are outweighed by those of the Removal Opponent.

10. The Removal Opponent further submits that the public interest is served by maintaining the registration in full, but the Removal Opponent has not provided any further reasoning or evidence in support of this submission. Nor has the Removal Opponent provided any evidence that there would be any prospect of confusion or public mischief resulting from the removal of the Trade Mark from the Register. I am not persuaded by this submission.

11. For the above reasons, and reiterating that the onus in respect of the discretion is on the Removal Opponent, I am not satisfied that it is reasonable to exercise my discretion not to remove the Trade Mark in respect of the Registered Goods.

Decision

1. The ground for removal under s 92(4)(b) has been established in respect of all the Registered Goods, and I am not satisfied that it is reasonable to exercise the Registrar’s discretion. Accordingly, I direct that trade mark registration number 1020641 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal before then, I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Costs

1. The Removal Applicant has requested an award of costs. Costs generally follow the event, and I see no reason to depart from that principle in this matter. As such, I award costs against the Removal Opponent in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

22 December 2023