Nordstrom Inc v Starite Distributors Inc

Nordstrom Inc. (the opponent) sought the removal of the NORDSTROM trade mark, registered by Starite Distributors Inc. (the applicant), from the Register of Trade Marks. The opponent, a large international corporation with extensive use of the NORDSTROM trade mark in the United States since 1901, argued that the applicant was not entitled to maintain the registration. The applicant, on the other hand, had registered the NORDSTROM trade mark in Australia in 1997 for "Manchester" in class 24 and "Mens shirts, mens jackets" in class 25, and had exhibited some individual uses of the mark between 2000 and 2004. The hearing officer was tasked with determining whether the opponent had standing as a "person aggrieved" and whether there had been non-use of the trade mark in Australia for the relevant period.

The primary legal issues before the hearing officer were whether the opponent qualified as a "person aggrieved" for the purposes of section 92(1) of the relevant legislation, and if so, whether the applicant had demonstrated sufficient use of the NORDSTROM trade mark in Australia during the three-year period preceding the opponent's application for removal. The opponent contended that the applicant needed to establish standing as a "person aggrieved" in relation to each aspect of the registered specification before the opponent's evidence of use would be considered.

The hearing officer found that there had been no use of the NORDSTROM trade mark in Australia during the relevant three-year period. Furthermore, the hearing officer determined that there were no circumstances justifying the continued presence of the trade mark on the Register. Consequently, the hearing officer directed that the registration number 852814 for the NORDSTROM trade mark be removed from the Register within one month of the decision, subject to any appeal proceedings. The applicant, having been successful, was awarded costs against the opponent.