Mantaport Pty Ltd v Brockman Research Pty Limited

Mantaport Pty Ltd applied to the Registrar of Trade Marks to remove trade mark registration number 564266, comprising the word KYPHI, from the Register on the grounds of non-use. The application was opposed by Brockman Research Pty Limited. The trade mark was registered for goods in Class 3, including cosmetics, toiletries, soaps, perfumery, and personal care products. Mantaport alleged that the mark was registered without an intention to use it in good faith and that there had been no use in good faith for a continuous period of three years prior to the application for removal. Brockman Research contended that the mark had been registered with an intention to use it in good faith and that it had been used in good faith, and that the three-year period of non-use had not elapsed.

The legal issues before the delegate of the Registrar of Trade Marks were whether Mantaport Pty Ltd was a "person aggrieved" for the purposes of section 23 of the *Trade Marks Act 1955*, whether Mantaport had established a prima facie case of non-use, and if so, whether Brockman Research had discharged its onus to demonstrate use of the mark or establish grounds for the Registrar's discretion to retain the mark on the Register. Specifically, the delegate had to determine if the evidence established a lack of intention to use the mark in good faith or a continuous period of three years of non-use, and whether the use of the mark on "hand and body gel" constituted use on goods of the same description as those in the registration, or if preparations for use and the potential for a "family" of products warranted retention of the mark.

The delegate found that Mantaport Pty Ltd was a person aggrieved, having demonstrated a reasonable possibility of being appreciably disadvantaged by the mark's presence on the Register, particularly given its own application for registration of the KYPHI mark and its export activities. While Mantaport's evidence, including an investigator's report and declarations, was considered to establish a prima facie case of non-use, it was not considered strong. The delegate accepted that the use of the mark on hand and body gel, which was considered a cleanser, could be attributed to Brockman Research and its associated entities, Hammersley and Tri Nature, due to their integrated business structure. However, the delegate determined that this type of cleanser was not a good of the same description as cosmetics, toiletries, and perfumery. Despite this, the delegate considered the potential for public perception of a "family" of KYPHI products and the fact that the opponent had made extensive preparations for the release of further goods under the mark.

Ultimately, the delegate exercised the Registrar's residual discretion to refuse the application for removal. The delegate concluded that while Brockman Research had only definitively shown use on some goods within the specification, the public interest would be best served by the mark remaining on the Register for all registered goods. This decision was based on the finding that Brockman Research had not abandoned its mark, that its removal would disadvantage it more than Mantaport, and that Mantaport, as a later user, should have checked the Register before commencing its own export activities. Accordingly, the application to remove the trade mark was dismissed, and costs were awarded to Brockman Research Pty Limited.