Opposition by Ambassador Apparel Group Pty Limited to application under section 92 of the Act by Kartell SpA to remove trade mark number 874952 (25) - CARTEL - in the name of Ambassador Apparel Group Limited

This matter concerned an opposition by Ambassador Apparel Group Pty Limited to an application by Kartell SpA to remove trade mark number 874952, the mark CARTEL, from the Register. The application for removal was made under section 92 of the Act on the grounds of non-use. The hearing officer was Iain Campbell Thompson.

The legal issues before the hearing officer were whether the trade mark CARTEL had been used in Australia in relation to the goods for which it was registered during the relevant period, and if not, whether the Registrar should exercise a discretion to allow the trade mark to remain on the Register. Specifically, the hearing officer had to determine if the evidence established use of the trade mark in good faith in Australia in relation to the registered goods, or if there were grounds to exercise the discretion under section 101(3) of the Act not to remove the mark.

The hearing officer reasoned that while the evidence of use of the trade mark CARTEL by Ambassador Apparel Group Pty Limited might not have been conclusive for every individual item, when considered as a whole, it established use in relation to the Opponent's Goods during the relevant period. This was primarily based on a declaration from a Procurement Officer for Transport for NSW, which affirmed continuous purchase of clothing and accessories bearing the CARTEL trade mark since 2009. The hearing officer also considered the discretion under section 101(3) of the Act, noting that exceptional circumstances were not required to be shown. Applying factors from previous decisions, and considering that most of the registered goods were either the same as or of the same description as the goods for which use was established, the hearing officer determined it was reasonable to exercise the discretion to allow the registration to remain intact, including in relation to "sports shoes" due to the potential for public confusion.

Accordingly, the hearing officer was satisfied that the opposition to the removal of the trade mark had been established, and ordered that the registration remain intact. The applicant for removal was ordered to pay the opponent's costs.