Millionaire International, Inc v John M. Bester & Associates Pty Limited

This matter concerned an application by John M. Bester & Associates Pty Limited ("the applicant") to remove trade mark registration number 355461, registered in the name of Millionaire International, Inc. ("the proprietor"), from the Register of Trade Marks. The applicant sought removal under section 23 of the relevant Act on the grounds of non-use of the mark in relation to magazines and other printed matter. The application was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant qualified as a "person aggrieved" and, if so, whether the applicant had established a prima facie case of non-use of the trade mark by the proprietor during the relevant period. The delegate also considered the proprietor's evidence of use, should a prima facie case have been established.

The delegate accepted that the applicant was a "person aggrieved" on the basis that it operated in the same trade and the continued registration of the mark might limit its legal rights. However, the delegate found that the applicant had failed to establish a prima facie case of non-use. This was because the statutory declaration relied upon by the applicant, made by its managing director, was considered insufficient. The delegate reasoned that a single declaration from a company officer, without further information regarding their expertise, experience in the industry, and the specific details of any inquiries made, could not adequately demonstrate a lack of use across the market. Furthermore, the hearsay evidence from contacted publishing houses lacked the necessary specificity regarding the individuals interviewed and the scope of their knowledge.

Consequently, as the applicant failed to establish a prima facie case of non-use, the onus did not shift to the proprietor to prove use. Nevertheless, for completeness, the delegate noted that the proprietor had provided evidence of some use of the trade mark, including sales of magazines. Accordingly, the application for removal was dismissed, and the proprietor was awarded costs.