Marcel Lema v Fondo Pty Ltd

This matter concerned an opposition to the removal of a trade mark from the Register, brought by Marcel Lema (the Opponent) against Fondo Pty Ltd (the Applicant). The dispute arose from an application for removal of the trade mark, and the Opponent sought to resist this removal. The decision was made by Nicholas Smith, a Hearing Officer.

The primary legal issue before the court was whether the Opponent had established use of the trade mark in Australia during the relevant period, as required by section 100 of the relevant Act, or whether the Registrar should exercise discretion under section 101(3) to prevent removal. The court was also required to consider the balance between the Opponent's private commercial interest in maintaining the registration and the public interest in the integrity of the Register.

The Hearing Officer found that the Opponent had failed to establish use of the trade mark in Australia during the relevant period. The evidence presented, including various annexures to a declaration, was considered insufficient to demonstrate use in the course of trade for the registered goods and services. The Hearing Officer noted that while some evidence suggested the Opponent was a prominent advocate for cycling and cycling organisations, this did not equate to use of the trade mark by the Opponent in a commercial context. Furthermore, the evidence did not establish a clear connection or licence between Granfondo Pty Ltd and the Opponent to attribute any use by the company to the Opponent.

Consequently, the Hearing Officer determined that the Opponent's private commercial interest was insufficient to outweigh the public interest in the integrity of the Register, particularly given the limited reputation of the trade mark. The Hearing Officer decided that the opposition to removal had not been established and directed that the trade mark be removed from the Register. The Applicant was awarded costs.