Opposition by MAISON ANSAC to application under regulation 17A.48C of the

This matter concerned an application by SC IP Limited for the cessation of protection of the protected international trade mark "A.E. DOR" (number 1091901) registered in class 33 for goods including Cognac and other spirits. MAISON ANSAC, the holder of the trade mark, opposed this application. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether MAISON ANSAC had established genuine use of the trade mark in Australia during the three-year period preceding the cessation application, or whether circumstances constituting an obstacle to use existed during that period. The delegate was required to determine if the evidence presented by MAISON ANSAC was sufficient to rebut the allegation of non-use. A secondary issue was whether, if grounds for removal were established, the delegate should exercise discretion not to remove the trade mark from the Register.

The delegate considered the evidence provided by MAISON ANSAC, including a pro forma invoice and images of bottles. While acknowledging that a pro forma invoice could, in some circumstances, assist in demonstrating use, the delegate found the evidence to be too scarce and lacking in detail. Specifically, there was insufficient evidence of actual delivery, inquiries, orders, or follow-up communications to satisfy the delegate that the activities surrounding the invoice amounted to a genuine offer to supply, an actual sale, or genuine preparatory steps for trade. The delegate noted that the onus was on MAISON ANSAC to establish genuine commercial use, and this had not been met. Furthermore, no circumstances constituting an obstacle to use were established.

Consequently, the delegate was not satisfied that genuine commercial use of the trade mark in Australia had been established during the relevant period. As no obstacles to use were proven and the evidence did not support the exercise of discretion to retain the mark, the delegate ordered that the protection of the trade mark "A.E. DOR" should cease.