Mistboy Pty Ltd v Transocean Marine Paint Association

Mistboy Pty Ltd (the applicant) sought the removal of trade mark registration number 720573 from the Register of Trade Marks, held by Transocean Marine Paint Association (the opponent). The application for removal was based on non-use of the trade mark. The dispute concerned whether the opponent had adequately demonstrated use of its trade mark in Australia in relation to the registered goods. The matter was heard by Jock McDonagh, a Hearing Officer of the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the opponent had discharged the onus placed upon it under the *Trade Marks Act 1995* to demonstrate that the trade mark had been used in Australia during the relevant period, or that there was a proper reason for non-use. This involved assessing the evidence presented by both parties regarding the nature of the goods, their distribution channels, and sales figures.

The Hearing Officer considered declarations from both parties. The applicant presented evidence suggesting that the goods were primarily sold offshore to ships planning to dock in Australia, with delivery to the quay, and were not stocked, ordered, or promoted through Australian retailers. The opponent, through declarations from a company director, asserted continuous use of the trade mark and claimed that related companies were authorised users. However, the Hearing Officer found the evidence insufficient to satisfy the onus of proof. Specifically, the Hearing Officer was not satisfied that there were any special facts, circumstances, or an overriding public interest that would justify the continued registration of the trade mark in the absence of demonstrated use.

Consequently, the Hearing Officer found that the opponent had failed to discharge its onus under the *Trade Marks Act 1995*. The opposition to the removal application was dismissed, and an order was made for trade mark registration number 720573 to be removed from the Register, unless an appeal was filed within one month. The opponent was also ordered to pay the applicant's costs.