Motohouse Co Ltd v AREA 1 Pty Ltd

This matter concerned an application by AREA 1 Pty Ltd (the Applicant) for the removal of a trade mark from the Register, specifically seeking the cessation of protection for certain goods. Motohouse Co Ltd (the Opponent) opposed this application. The dispute arose from allegations that the Opponent had no intention in good faith to use the trade mark in Australia at the time the application for its registration was filed, and that the trade mark had not been used in Australia in good faith. The decision was made by Nicholas Smith, a Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Opponent had established that, at the time of the trade mark application, it had a genuine intention to use the trade mark in Australia in relation to the goods for which removal was sought. A secondary issue was whether the Opponent had, in fact, used the trade mark in good faith in Australia prior to the relevant period. The court was required to consider the onus of proof, which rested on the Opponent to rebut the allegations of non-use and lack of intention.

The court applied the principles established in cases such as *Aston v Harlee Manufacturing Co* and *Structureco Inc v Starite Distributors Pty Ltd*, which confirm that the onus on an opponent in such removal proceedings is not arduous. The court found that the Opponent had provided sufficient evidence, including declarations detailing the creation and continuous use of the trade mark on various apparel items since the relevant date, and evidence of international shipping and sales to Australia. This evidence satisfied the court that the Opponent had the requisite intention to use the trade mark in good faith.

Consequently, the Delegate of the Registrar of Trade Marks decided that the Opponent had successfully established its opposition to the cessation of protection in respect of the goods in question. The Applicant was directed to pay the Opponent's costs.