Nordstrom Inc v Starite Distributors Pty Ltd

This matter came before Alison Windsor, Hearings Officer at IP Australia, concerning an application by Nordstrom Inc to remove a registered trade mark from the Register for non-use. The dispute involved a trade mark registered by Starite Distributors Pty Ltd, which Nordstrom Inc sought to have removed in relation to goods in classes 24 and 25. This was the second such application by Nordstrom Inc, the first having resulted in the removal of "ladies dresses" and "ladies knitwear" from the class 25 specification.

The Hearings Officer was required to determine whether the trade mark had been used in good faith by its registered owner, Starite Distributors Pty Ltd, in relation to the goods specified in classes 24 and 25 during the period of three years ending one month before the filing of Nordstrom Inc's application, which was 17 August 2001 to 17 August 2004. Specifically, the court needed to assess the evidence of use for "men's shirts" and "men's jackets" in class 25, and for goods in class 24.

The Hearings Officer applied section 100 of the relevant Act, which places the onus on the trade mark owner to rebut allegations of non-use. Evidence was presented by Starite Distributors Pty Ltd, including declarations from its director and the director of its authorised user, supported by invoices, brochures, and garment tags. For class 25, the Hearings Officer found sufficient evidence of use of the trade mark on men's shirts and jackets within Australia during the relevant period, citing specific invoices and brochures as proof. In class 24, while use was not demonstrated across the entire range of goods, the Hearings Officer considered it inappropriate to restrict the specification, drawing an analogy to judicial comments regarding the distinction between broad categories of goods.

Consequently, the Hearings Officer decided that the goods specification in class 25 would remain unchanged. In class 24, despite some goods not having demonstrated use, the Hearings Officer concluded that restricting the specification was not appropriate. Therefore, the application for removal of the trade mark was unsuccessful, and Starite Distributors Pty Ltd was awarded its costs against Nordstrom Inc.