Opposition by Hemmes Trading Pty Limited to application under section 92 of the

This matter concerned an application by Est Living Pty Ltd for the partial removal of trade mark number 1164556, registered in the name of Hemmes Trading Pty Limited, from the Australian Register of Trade Marks. The application sought removal under section 92(4)(b) of the Trade Marks Act 1995 (Cth) on the grounds of non-use in relation to goods in class 16 (paper, cardboard, printed matter, stationery) and class 32 (beers, non-alcoholic drinks, fruit juices). Hemmes Trading Pty Limited opposed the removal application. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether Hemmes Trading Pty Limited had established use of the trade mark "est" in good faith in Australia in relation to the goods in class 16 during the three-year period ending one month before the filing of the removal application. The Removal Applicant contended that no such use had been established, while the Removal Opponent argued that certain evidence demonstrated use, or that circumstances justified non-use. The delegate also considered the admissibility of additional evidence submitted by the Removal Opponent after the close of evidence.

The delegate reasoned that the Removal Opponent bore the burden of rebutting the allegation of non-use on the balance of probabilities. While the Removal Opponent submitted various pieces of evidence, including a wedding book, social media posts, event sheets, a wedding contract, and an invitation, the delegate found that these did not demonstrate use of the trade mark "est" in relation to goods in class 16. The delegate considered that references to "Est." in these materials primarily identified a venue or event space, and that the dominant branding was "Merivale." Furthermore, the delegate found that the use of the trade mark on menus, while potentially integral to restaurant services, did not constitute use in relation to printed matter as goods in class 16, distinguishing the situation from a prior case where a magazine was considered a tradeable good. The delegate concluded that the class 16 goods were produced solely for the Removal Opponent's benefit and were not provided "in the course of trade" in a manner that would establish use for the purposes of section 92(4)(b).

Consequently, the delegate determined that the Removal Opponent had failed to establish use of the trade mark in relation to the goods in class 16 during the relevant period. The delegate also found that the additional evidence submitted late by the Removal Opponent did not alter this outcome. Accordingly, the delegate ordered the partial removal of the trade mark from the Register in respect of the goods in class 16.