Mazen Abdul-Kader v Clipsal Australia Pty Ltd

This matter concerned an application by Mazen Abdul-Kader (the applicant) to remove a trade mark from the Register of Trade Marks, opposed by Clipsal Australia Pty Ltd (the opponent). The application was heard by Jock McDonagh, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark should be removed from the Register pursuant to section 92(4)(a) of the relevant legislation. This ground for removal requires proof that, at the time of the trade mark's registration, the applicant for registration had no intention in good faith to use the trade mark in Australia, or authorise its use, or assign it for use, and that the registered owner had not used the trade mark in Australia, or in good faith, at any time before the period of one month preceding the filing of the removal application.

The delegate reasoned that the similarity of the parties' trade marks was irrelevant to the removal proceedings, as section 92(4) strictly limits the grounds for removal. The delegate noted that removal proceedings are not intended to provide a second opportunity for parties who have missed time limits for opposing a trade mark's registration. Based on the evidence presented, the delegate was satisfied that there had been genuine commercial use of the trade mark in relation to the registered goods during the relevant period. Consequently, the application for removal was refused. The opponent, as the successful party, was awarded costs.