Opposition by FFAUF ITALIA S.P.A. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Industria De Diseno Textil, S.A. (Inditex, S.A.) for removal of trade mark number 1028786 (29-33) – LA...

This matter concerned an opposition by FFAUF ITALIA S.P.A. (the Opponent) to an application by Industria De Diseno Textil, S.A. (the Applicant) under section 92 of the *Trade Marks Act 1995* (Cth) for the removal of trade mark number 1028786. The application for removal was based on grounds of non-use. The decision was made by Nicholas Smith, a delegate of the Registrar of Trade Marks, based on written submissions and evidence.

The central legal issue was whether the Opponent had established use of the trade mark in Australia during the relevant three-year period preceding the filing of the removal application, as required by section 92(4)(b) of the Act. The onus was on the Opponent to rebut the allegation of non-use, pursuant to section 100 of the Act. This required the Opponent to demonstrate either actual use of the trade mark in good faith, or that non-use was due to circumstances constituting an obstacle to its use.

The delegate found that the Opponent's evidence, which consisted of photographs of a single product bearing the trade mark taken after the relevant period, and lacking evidence of significant sales, advertising, or a broader reputation, was insufficient to establish use. Consequently, the delegate determined that the Opponent had not discharged its burden of proof. The delegate declined to exercise discretion not to remove the trade mark, citing the importance of the integrity of the Register.

Accordingly, the delegate directed that registration 1028786 be removed from the Register one month from the date of the decision, subject to any appeal. The Opponent was also ordered to pay the Applicant's costs.