Matthew Clark v Hyper Bicycles, Inc

[2022] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Matthew Clark to an application under section 92 of the Trade Marks Act 1995 (Cth) by Hyper Bicycles, Inc. for removal of trade mark number 1525987 (12) – HYPER BIKES – in the name of Matthew Clark

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Megan Evetts of Counsel instructed by Spruson & Ferguson

Decision:

2022 ATMO 58

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 11 May 2020 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Hyper Bicycles, Inc. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1525987

Lodgement date

15 Nov 2012

Goods

Class 12: Mountain Bikes

(‘Registered Goods’)

Owner

Matthew Clark

Trade Mark

HYPER BIKES

(‘Trade Mark’)

2.  Matthew Clark (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 25 May 2020 and a Statement of Grounds and Particulars (‘SGP’) on 22 June 2020.  The Applicant filed a Notice of Intention to Defend on 23 July 2020.

1. The Opponent subsequently filed evidence in support (‘EIS’) of its opposition to removal .  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

   4.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 20 April 2021 the Applicant requested a hearing and paid the appropriate fee.  On 2 November 2021 the matter was set down for a hearing on 15 March 2022.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 20 January 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 9 March 2022 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.  At the hearing Megan Evetts of Counsel instructed by Jacqueline Chelebian of Spruson & Ferguson appeared for the Applicant.  The Opponent did not appear.

   5.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, oral submissions made at the hearing and the evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   Evidence in Support

   • Declaration by Matthew Clark, the Opponent, dated 22 October 2020 (‘Clark 1’) together with Exhibits A to R.

   Evidence in Answer

   • Declaration by Jacqueline Chelebian, Senior Associate of Spruson & Ferguson Patent and Trade Mark Attorneys, legal representative for the Applicant, dated 27 January 2021 (‘Chelebian declaration’) together with Exhibits JJC-1 to JJC-11.

   Evidence in Reply

   • Declaration by Matthew Clark, dated 25 March 2021 (‘Clark 2’) together with Exhibits RE-1 to RE-09.

   The Relevant Provisions

   6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   (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.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 11 April 2020 (‘relevant period’).

   8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) 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.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   11.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   12. I further note that 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),[3] 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’.[4] 

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

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

   Discussion

2. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[5] As the Trade Mark had been registered for more than five years as at the date of the application, I need only consider the application for removal under s 92(4)(b). Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[6]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by an authorised user is taken to be use of the Trade Mark by the Opponent.[7] 

   [5] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

   [6] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

   [7] Section 7(3) of the Act.

3. If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

4. The Opponent’s evidence in this matter consists of two declarations by Matthew Clark. Clark 1 makes a broad assertion that at the date the Opponent applied to register the Trade Mark he intended to use the Trade Mark and annexes evidence from 2013 in support of this statement. As I do not need to consider the application for removal under s 92(4)(a) this evidence is of limited relevance to my decision.

5. Clark 1 annexes evidence in Exhibits H to O which purport to show sales of the Registered Goods under the Trade Mark to Big W (which then retailed the product) in the relevant period.  The relevant exhibits consist of artwork and product images depicting bikes displaying the trade mark HYPER or HYPER EXTENSION, dated purchase orders from a Chinese supplier known as HYPER EXTENSION LIMITED (sometimes referred to as HYPER EXTENSION LTD) and a copy of the Big W catalogue depicting the bicycle sold under the HYPER or HYPER EXTENSION mark.  The number of bikes sold by HYPER EXTENSION LIMITED to Big W/Woolworths is relatively small.  

6. Clark 1 annexes additional evidence being a YouTube page for Hyper Bikes, started in 2019 but with videos post-dating the relevant period, Big W catalogues post-dating the relevant period depicting bicycles sold under the HYPER mark and the contents of a website at the time of the declaration (post-dating the relevant period) at (a domain name, according to Exhibit B, owned by an entity apparently unconnected with the Opponent).   Clark 1 also annexes a letter of authorisation dated 1 May 2013 between the Opponent and HYPER EXTENSION LTD with respect to the Trade Mark.  The only relevant portion of the authorisation letter states that the Opponent authorises HYPER EXTENSION LTD ‘To unreservedly use the HYPER BIKES Trade Mark for commercial purposes in Australia’.  There is no other evidence of the relationship between the Opponent and HYPER EXTENSION LTD or any other steps the Opponent has taken to maintain quality control over the goods produced by HYPER EXTENSION LTD.

7. The Chelebian declaration notes that the domain name <hyperbikes.com.au> is presently owned by Hyper Extension Pty Ltd and does not permit the direct purchase of the product.  Furthermore, the bikes currently sold under the HYPER mark by Big W are stated as being produced by HYPER EXTENSION LTD and the servicing and after-sales for the bike products are done by third party companies unconnected to the Opponent.

8. Clark 2 responds to certain criticisms made by the Applicant in respect of the use of the Trade Mark by HYPER EXTENSION LTD.   Mr. Clark provides evidence that at the time of the authorisation letter he was the majority shareholder in HYPER EXTENSION LTD, annexing its 2013 Annual Return.  He then states that the company Hyper Extension Pty Ltd was the registered Australian branch of HYPER EXTENSION LTD and he was the sole shareholder of Hyper Extension Pty Ltd until its deregistration in 2019.  Clark 2 also exhibits further documentation showing that bikes sold under the HYPER trade mark are on sale at Big W in 2021.

9. In my review of the evidence I reach the following conclusions.  Firstly I am satisfied that, during the relevant period, mountain bikes were sold under the HYPER Mark in Australia (notwithstanding the mild stylisation in the word HYPER as depicted in Clark 1).  Secondly I am satisfied that such use amounts to use of the Trade Mark. Given the nature of the goods (bicycles) HYPER and HYPER BIKES are substantially identical.  Thirdly, as the entity applying the Trade Mark to the bicycles and selling them to Woolworths/Big W, the use of the Trade Mark in the relevant period was use was by the Chinese company HYPER EXTENSION LTD.  Finally I am satisfied that, aside from use by HYPER EXTENSION LTD, there is no evidence of use of the Trade Mark by the Opponent.[8]

   [8] There is evidence in the EIS and EIR that suggest that there may be usage of the HYPER mark by an entity known and Hunter Leisure Pty Ltd as provision of sales and servicing of the bikes produced by HYPER EXTENSION LTD, but no connection between it and the Opponent is set out.

10. The key question therefore is whether the use of the Trade Mark by HYPER EXTENSION LTD was authorised by the Opponent under ss 7 and 8 of the Act. Under s 8 of the Act, authorised use requires use under the control of the trade mark owner. In the 2016 Full Federal Court decision of Lodestar Anstalt v Campari America LLC (‘Lodestar’)[9], Basenko J summarises the law at paragraph 63:

    [9] [2016] FCAFC 92 (‘Lodestar’).

    Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services under the control of the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression under the control of is not limited to the two cases identified in s 8(3) and (4) of the Act.

11. Justice Basenko later stated that:

    98.        … actual control will be a question of fact and degree. A licence agreement may contain a term that sets in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

12. In that same case, Katzmann J commented on the construction of section 8 as follows:

    169. Section 8 provides that whether a person is an authorised user of a registered mark and whether the use of the mark by that person is an authorised use depend on whether the person uses the mark under the control of the registered owner (subss (1) and (2)). Subsections (3)–(4) reveal that use will be taken to be use under the control of the owner where, for example, the owner “exercises quality control over goods or services ... dealt with or provided in the course of trade by another person ... and ... in relation to which the mark is used” or “exercises financial control over the other person’s relevant trading activities”. Subsection (5) states that subss (3)–(4) do not limit the meaning of the expression “under the control of” but this statement is ambiguous. It might signify that “control” is not limited to quality control or financial control. On the other hand, it might signify that control is not limited by the context provided by subs (3)–(4). The former construction is the preferable one. In my opinion, the examples given in subss (3) and (4) give colour to the concept of control in s 8. The language used in the two subsections strongly suggests that — regardless of the form control might take — it is the exercise of control that matters, not merely the right to do so.

    …

    184. In my opinion, under the 1995 Act the use of a registered trade mark by an authorised user will only be taken to be use by the registered proprietor of the mark if the registered proprietor exercises control over the use of the mark during the period in question so as to maintain a connection in the course of trade between the goods or services and the registered proprietor. In a case where a registered proprietor of a trade mark is relying on use by an authorised user, it is still necessary to demonstrate that the trade marks indicate a connection in the course of trade with the registered proprietor. The purpose of s 8 is to identify the means by which that is done. …
    185. A bare licence to use a trade mark, particularly a perpetual licence, would not be sufficient. Without more, it would amount to a divestment of control. But there is no reason in principle why control might not be exercised through conditions imposed by agreement on the use to which the trade marks might be put and, in the event of an application to cancel the registration for non-use, proved by evidence that the authorised user is complying with those conditions. Whether or not that is sufficient in any particular case, however, will depend on the terms of the agreement, most importantly whether the control is such as to maintain the registered proprietor’s connection with the marks. As the Act makes clear, that can be achieved if either quality control or financial control is exercised. If it is not, the registered proprietor (upon whom the burden of proof rests), must show that it has exercised some other form of control in the relevant period which maintains its connection with the marks.

    24.   In the Full Federal Court decision of Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’)[10], the Full Court at paragraph 45 noted that as a matter of practicality control could be found in circumstances where the two companies shared the same directors:

    [10] [2019] FCAFC 10.

    The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’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. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.

    …

    …it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[11]

    [11] Ibid [45].

    25.     In the present case, the authorisation letter from the Opponent to HYPER EXTENSION LTD in 2013, exhibited at Exhibit A to Clark 1, amounts to a perpetual bare licence to use the Trade Mark.  Paragraph 185 of Lodestar is explicit that such a licence is insufficient, by itself to show control.  In addition, there is no evidence before me of any practical control exercised by the Opponent (an individual based in Australia) over the operation of HYPER EXTENSION LTD (a company based in China) in the relevant period.   While the Trident case indicates that in certain circumstances (such as where the companies shared the same directors) control can be inferred, such evidence does not exist before me.  While the Opponent, Mr Clark, was the majority shareholder of HYPER EXTENSION LTD in 2013, there is no evidence before me as to whether he remained the majority shareholder or director or indeed had any connection with HYPER EXTENSION LTD in the relevant period.   Mr Clark does give evidence that the company Hyper Extension Pty Ltd was the registered Australian branch of HYPER EXTENSION LTD and he was the sole shareholder of Hyper Extension Pty Ltd.  However it is not clear to me what the practical meaning of being ‘the registered Australian branch’ is and in any event that does not provide me a basis to presume that Mr Clark had any control over the use of the Trade Mark by HYPER EXTENSION LTD in the relevant period.  

    26. Had Mr Clark exercised quality control over HYPER EXTENSION LTD’s use of the Trade Mark in the relevant period, such evidence, either in the form of corporate documents illustrating Mr Clark’s role with HYPER EXTENSION LTD (as director/shareholder or corporate officer), or documents evidencing actual control over the quality of bicycles produced under the Trade Mark, would not have been hard to provide. In the absence of such documentation, which would be expected to be within the Opponent’s power to provide, I am not satisfied that the Opponent exercised sufficient quality control over the manner in which the Trade Mark was used by HYPER EXTENSION LTD. Consequently, use by HYPER EXTENSION LTD is not authorised use of the Trade Mark under s 8 of the Act.

1. In summary I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods during the relevant period.

   Obstacles to use

   28. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.

   Registrar’s Discretion

   29.   As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[12] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [12] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[13]

   [13] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[14]

   [14] Ibid [171]-[172].

2. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[15] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[16] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[17]

   [15] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [16] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [17] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   31.   Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[18]

   [18] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   32. In the present case, there is no evidence that the Opponent (as opposed to HYPER EXTENSION LTD) has used the Trade Mark since 2014 or intends to use the Trade Mark in the future in Australia for the Registered Goods. Given that, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way. In particular the use of the Trade Mark by a third party (HYPER EXTENSION LTD) which, on the evidence presently before me, is unconnected to the Opponent, does not provide a basis to allow the Trade Mark to remain registered to the Opponent. I note that if HYPER EXTENSION LTD wishes to apply to register the Trade Mark for Registered Goods, that is an option available to it, subject to the examination requirements in the Act. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of the Registered Goods.

   Decision

   33.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1525987 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

   34. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I award costs against the Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   19 April 2022