Olin Corporation v Detnet South Africa Pty Ltd

Olin Corporation (the Opponent) opposed an application by Detnet South Africa Pty Ltd (the Applicant) to remove trade mark number 195237, a figurative mark comprising "W RANGER", from the Register of Trade Marks under section 92(4)(b) of the *Trade Marks Act 1995* (Cth). The trade mark was registered in Class 13 for "Arms and Ammunition" and had been registered since 1965. The Applicant sought removal on the grounds of non-use during the three-year period preceding the filing of the removal application, which ended on 15 November 2022.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the Opponent had used the registered trade mark, or a mark with additions or alterations not substantially affecting its identity, in Australia in good faith for the specified goods during the relevant three-year period. A secondary issue was whether, if non-use was established, the Registrar should exercise discretion under section 101 of the Act to decline removal of the trade mark from the Register.

The delegate found that the Opponent had not used the trade mark in its registered form. The evidence presented by the Opponent showed use of various word and composite marks, such as "WINCHESTER SUPER RANGER" and "RANGER® Bonded", but the delegate determined that these marks were not substantially identical to the registered "W RANGER" mark. Applying the principles from cases like *Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited* and *Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd*, the delegate concluded that the differences, including the omission of the distinctive stylised "W" and the inclusion of additional text or device elements, resulted in a total impression of dissimilarity. Consequently, the Opponent had not discharged its onus of establishing use of the trade mark or a substantially identical mark. Furthermore, the Opponent failed to persuade the delegate to exercise discretion in its favour, as it provided no evidence of future intention to use the mark and its submissions regarding reputation and potential confusion were unsubstantiated by the evidence.

Accordingly, the delegate directed that the registration of trade mark number 195237 be removed from the Register one month from the date of the decision, and awarded costs against the Opponent.