Momaworld Sdn Bhd v Cesari Srl

Momaworld Sdn Bhd (the Opponent) opposed an application by Cesari Srl (the Applicant) to remove its Australian trade mark number 1647184, registered for goods in classes 30 and 32, from the register under section 92 of the *Trade Marks Act 1995* (Cth). The Applicant sought removal on the grounds of non-use of the trade mark. The matter was heard by M. Cooper, delegate of the Registrar.

The primary legal issue before the delegate was whether the Opponent had made out a case for the discretion under section 101(3) of the Act to be exercised to prevent the removal of the trade mark from the register, despite evidence of non-use. This required determining whether the use of the trade mark by Momawater Sdn Bhd, a related entity, could be considered authorised use by the Opponent under section 8 of the Act, and therefore use by the Opponent itself under section 7(3).

The delegate considered the relationship between Momaworld Sdn Bhd and Momawater Sdn Bhd, noting that both were wholly owned subsidiaries of the same parent company, Subur Tiasa Holdings Berhad. They shared the same registered address, auditor, and directors. Drawing on the principles from *Trident Seafoods Corporation v Trident Foods Pty Ltd*, the delegate inferred that the two companies operated with a unity of purpose and that the Opponent controlled Momawater's use of the trade mark. Consequently, Momawater's use was deemed to be use by the Opponent for the purposes of the Act, rebutting the allegation of non-use for "Beverages, namely drinking water; table water" in class 32. However, the Opponent failed to satisfy the delegate that it was reasonable to exercise the discretion not to remove the trade mark for the remaining goods.

Accordingly, the delegate directed that the trade mark be removed from the register for all goods in Class 30 and for specific goods in Class 32, including flavoured non-alcoholic water, aerated and mineral waters, fruit drinks and juices, soft drinks, energy drinks, and various other beverages and drink-related products. No orders were made as to costs, as both parties had been partially successful.