Opposition by Feelgood Lifestyle Brands Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Zambrero Australia Holdings Pty Ltd to remove trade mark number 1054675 (class 39, 43) -...

This matter concerned an application under section 92 of the *Trade Marks Act 1995* (Cth) by Zambrero Australia Holdings Pty Ltd (the Applicant) to remove trade mark number 1054675 from the Register, which was registered in classes 39 and 43. Feelgood Lifestyle Brands Pty Ltd (the Opponent) opposed the removal. The decision was made by Katrina Brown, Hearing Officer, in the Trade Marks and Designs section.

The primary legal issue before the Hearing Officer was whether the Opponent had used the trade mark in Australia in relation to the registered services during the relevant period, or alternatively, whether there was an obstacle to its use. The Applicant sought removal on the ground of non-use or obstacle to use under section 92(4)(b) of the Act.

The Hearing Officer reasoned that to succeed, the Opponent needed to demonstrate "use as a trade mark," which means use of the sign as a badge of origin indicating a connection in the course of trade between the services and the proprietor. The Opponent's evidence consisted of a declaration detailing business development activities and annexures showing the registration of the company and business names. However, the Hearing Officer found that these registrations, by themselves, did not demonstrate use as a badge of origin in the course of trade, distinguishing between conducting business under a name and using a mark to distinguish goods or services. As there was no evidence of services being sold under the trade mark or any commercial dealing by reference to the sign, and considering the long period of non-use, the Hearing Officer was not satisfied that it was reasonable to exercise discretion to allow the trade mark to remain on the Register.

Consequently, the Hearing Officer found that the ground for removal under section 92(4)(b) had been established and directed that trade mark number 1054675 be removed from the Register one month from the date of the decision, unless a notice of appeal was filed. The Opponent was also ordered to pay the Applicant's costs.