Malcolm Walter Atwell v Truline (Australia) Pty Ltd

This matter concerned an opposition filed by Malcolm Walter Atwell (Atwell) against the trade mark application of Truline (Australia) Pty Ltd (Truline). Atwell sought the removal of Truline's trade mark registration, arguing that the specification of goods was broader than the goods Truline actually sold. The hearing was conducted by Alison Windsor, a Hearings Officer for IP Australia.

The primary legal issue before the Hearings Officer was whether Truline's trade mark registration should be removed, in whole or in part, due to non-use of the mark on the full range of goods specified. Specifically, the question was whether Atwell had established a case for removal, and if so, whether the Hearings Officer should exercise discretion to restrict the specification of goods rather than remove the registration entirely.

The Hearings Officer considered evidence from both parties. Truline provided declarations and catalogues to demonstrate its use of the trade mark. Atwell, in turn, presented evidence suggesting that Truline's catalogues did not cover all the goods listed in the registration and that Truline primarily sold "sporting hardware" rather than "software" such as balls and bats. The Hearings Officer noted that while Truline had shown use on less than the complete range of goods, Atwell had technically made out a case for removal. However, applying the discretion embodied in subsection 101(3) of the Act, the Hearings Officer determined that a restriction to the specification as requested by Atwell was not merited.

Consequently, the application for removal was dismissed. Truline, having been successful, was awarded costs against Atwell on the official scale.