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 569495 (30) – PASTA ZARA...

This matter concerned an application by Industria De Diseno Textil, S.A. (Inditex, S.A.) to remove trade mark number 569495 from the Register under section 92 of the *Trade Marks Act 1995* (Cth) due to alleged non-use. FFAUF ITALIA S.P.A. (the Opponent) opposed this removal application. The decision was made by Nicholas Smith, a delegate of the Registrar of Trade Marks, based on written submissions and evidence provided by both parties, as no hearing was requested.

The central legal issue before the delegate was whether the Opponent had established use of the trade mark "PASTA ZARA" in Australia during the relevant three-year period ending one month before Inditex, S.A.'s removal application was filed. Specifically, the delegate had to determine if the Opponent had rebutted the allegation of non-use, as required by section 100 of the Act, and whether the trade mark should remain on the Register.

The delegate applied section 92(4)(b) of the Act, which permits removal if a trade mark has remained registered for three continuous years without use in Australia. The onus was on the Opponent to demonstrate use under section 100(3)(a) of the Act. The delegate was satisfied, based on the evidence presented, that the Opponent had established authorised use of the trade mark for the registered goods during the relevant period. Consequently, the delegate decided that the Opponent had successfully opposed the removal application.

Accordingly, the delegate ordered that trade mark registration number 569495 should not be removed from the Register. The Opponent was successful in its opposition and was awarded costs against the Applicant, Inditex, S.A., in accordance with the *Trade Marks Regulations 1995* (Cth).