Nori Investments Pty Ltd v Nano Home Loans Pty Ltd

Nori Investments Pty Ltd, the registered owner of the trade mark "How-Nano", faced an application by Nano Home Loans Pty Ltd seeking the partial removal of the trade mark from the Register. The application was made under section 92 of the *Trade Marks Act 1995* (Cth) for non-use, specifically targeting services within Class 36, namely mortgage broking and associated referral services. The matter was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the trade mark had remained registered for a continuous period of three years ending one month before the application was filed, without use in Australia by the registered owner. If this ground was established, the delegate then had to consider whether to exercise the discretion under section 101(3) of the Act to allow the trade mark to remain on the Register in respect of the specified services, despite the non-use. The onus was on Nori Investments Pty Ltd to rebut the allegation of non-use and to persuade the delegate that it was reasonable not to remove the trade mark.

The delegate found that Nori Investments Pty Ltd had not established use of the trade mark in relation to the mortgage broking and referral services during the relevant three-year period. While Nori Investments Pty Ltd presented evidence of its intention to use the trade mark for these services in conjunction with its modular construction products and detailed ongoing discussions and preparations for future offerings, this did not constitute actual use during the period in question. Consequently, the ground for partial removal under section 92(4)(b) was established. In considering the discretion under section 101(3), the delegate noted the importance of the integrity of the Register and the public interest in removing unused trade marks. Despite Nori Investments Pty Ltd's assertions of future plans and the potential impact of removal on its business strategy, the delegate concluded that it was not reasonable to exercise the discretion in favour of the registered owner, as the onus to demonstrate reasonableness had not been discharged.

Accordingly, the delegate ordered the partial removal of the trade mark "How-Nano" from the Register in respect of the mortgage broking and associated referral services within Class 36.