Multi Access Limited v Guangzhou Wang Lao Ji Great Health Industry Co Ltd

This decision concerned six applications made by Guangzhou Wang Lao Ji Great Health Industry Co., Ltd. (the Applicant) to remove six registered trade marks from the Register of Trade Marks, owned by Multi Access Limited (the Opponent). The applications were brought under section 92 of the Trade Marks Act 1995 (Cth) and sought removal of the trade marks in respect of all goods for which they were registered. The proceedings were heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established use of its trade marks in Australia during the relevant three-year period preceding the filing of the removal applications, as required by section 92(4)(b) of the Act. This ground for removal alleged that the trade mark had remained registered for a continuous period of three years without use in Australia by the registered owner, either in good faith or at all. The Opponent bore the onus of rebutting this allegation by demonstrating use of the trade marks in good faith in relation to the specified goods.

The delegate found that the Opponent had failed to rebut the allegation of non-use. The evidence presented, including invoices and bills of lading, primarily related to periods prior to the relevant three-year period or lacked sufficient detail and clarity to establish authorised use in Australia. Invoices written in Chinese were not accompanied by the required translations and verification, rendering them unhelpful. Evidence of website use and the presence of product packaging in Australia were also found to be either from outside the relevant period or insufficient to demonstrate ongoing use. Consequently, the delegate concluded that the grounds for removal under section 92(4)(b) had been established.

The Opponent also requested that the delegate exercise discretion under section 101(3) of the Act to allow the trade marks to remain on the Register despite the established grounds for removal. However, the delegate found no basis to exercise this discretion, and therefore ordered the removal of the trade marks from the Register.