MynSmart Pty Ltd v Zora Tech Pty Ltd

This matter concerned an application by MynSmart Pty Ltd (the Applicant) to remove a trade mark from the Register, opposed by Zora Tech Pty Ltd (the Opponent). The dispute arose from the Opponent's alleged non-use of its trade mark in relation to certain services. The Applicant contended that the Opponent had not demonstrated use of the trade mark during the relevant period as required by section 92(4)(b) of the relevant Act.

The primary legal issue before the Hearing Officer was whether the Opponent had established use of the trade mark in Australia in good faith in relation to the services for which it was registered, or whether grounds for removal under section 92(4)(b) had been made out. A secondary issue was the exercise of the Registrar's discretion under section 101(3) of the Act to allow the trade mark to remain on the Register, even if grounds for removal were established, if it was considered reasonable to do so.

The Hearing Officer noted that the Opponent's evidence, primarily consisting of training materials, did not provide a clear narrative of the trade mark's use, market, or clients. While some use could be inferred from copyright dates on annexed materials, the Opponent failed to provide copies of licenses or corroborative evidence for its assertion of licensing the trade mark. The Hearing Officer found that the Opponent provided training services to mining companies in the safe operation of equipment, particularly dragline operators, during the relevant period, but had not shown use beyond these services. The Applicant had not filed evidence. The Hearing Officer considered the discretion under section 101(3) and noted that factors such as abandonment, residual reputation, and the conduct of the parties are relevant, but found that neither party had provided evidence to assist in the exercise of this discretion.

The Hearing Officer determined that the grounds for removal had not been sufficiently established to warrant removal, but found it appropriate to restrict the services for which the trade mark was registered. The Hearing Officer directed that, unless a notice of appeal was served within one month, the services be amended to specify "Provision of advice for improving the operation of mining equipment" under Class 35, and various vocational and industrial training services related to mining equipment operation under Class 41, and technological advisory services related to the operation of mining equipment under Class 42. If an appeal was filed, the disposition would be in accordance with the court's order.