Opposition by Biodental Remin Ltd. to applications under section 92 of the Trade Marks Act 1995 (Cth) by Biodental Industries Pty Ltd for removal of trade marks numbered 1316708 (3,5,30) – anticay and 1642434...

This matter concerned an opposition by Biodental Remin Ltd. to applications by Biodental Industries Pty Ltd for the removal of two trade marks, numbered 1316708 and 1642434, from the Register under section 92 of the *Trade Marks Act 1995* (Cth). The applications for removal were based on allegations of non-use. The decision was made by Nicholas Smith, Hearing Officer.

The primary legal issue before the Hearing Officer was whether Biodental Remin Ltd. had demonstrated sufficient use of the trade marks during the relevant period to prevent their removal from the Register, or alternatively, whether the Registrar should exercise discretion to allow the trade marks to remain registered. Specifically, the Hearing Officer had to consider if the evidence presented established bona fide use of the trade marks in the course of trade, or if circumstances justified the preservation of the trade marks as assets for the benefit of creditors.

The Hearing Officer found that while the opponent, Biodental Remin Ltd., had been wound up in insolvency and its liquidator had sought to preserve the trade marks as assets, the evidence of use was insufficient. The opponent's evidence included invoices for sales to India, but crucially, no sales of products bearing the trade marks in Australia during the relevant period were established. Furthermore, there was no documentary evidence of any licence agreements with third parties. The Hearing Officer noted that a single bona fide use could be sufficient, but it required overwhelmingly convincing proof, which was lacking. Consequently, the Hearing Officer concluded that it was not an appropriate case to exercise the Registrar's discretion to allow the trade marks to remain registered.

The Hearing Officer ordered that both trade marks, 1316708 and 1642434, be removed from the Register in respect of all goods for which they were registered, one month from the date of the decision, subject to any appeal. The Hearing Officer also awarded costs in favour of the applicant, Biodental Industries Pty Ltd.