Mahoney and Somaia Pty Ltd v Melanie Jackson

Mahoney and Somaia Pty Ltd (the applicants) sought an order under section 92 of the *Trade Marks Act 1995* (Cth) for the removal of the trade mark "MELANIE JACKSON" (the trade mark) from the Register of Trade Marks. The respondent, Melanie Jackson, was the registered owner of the trade mark. The applicants contended that the trade mark had not been used in Australia by the registered owner or with their consent for a continuous period of three years ending one month before the filing of the application for removal.

The primary legal issue before the Court was whether the applicants had established that the trade mark had not been genuinely used in Australia during the relevant three-year period. A further issue arose as to whether, even if non-use was established, the Court should exercise its discretion under section 92(4)(b) of the Act not to remove the trade mark from the Register.

The Court found that the evidence presented by the applicants established a prima facie case of non-use. The respondent failed to provide sufficient evidence to rebut this prima facie case or to demonstrate genuine use of the trade mark in Australia. Consequently, the Court concluded that the grounds for removal under section 92(4)(b) were made out. The Court further determined that there were no compelling reasons to exercise its discretion to permit the trade mark to remain on the Register, noting the lack of evidence of any intention to use the mark or any prejudice that would be suffered by the respondent if the mark were removed.

The Court ordered that the trade mark "MELANIE JACKSON" be removed from the Register of Trade Marks.