Opposition by Scalvino Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Belgrove Holdings Pty Ltd and Millwood Holdings Pty Ltd to remove trade mark number 603096 (class 31) – AUS-AVO-...

Scalvino Pty Ltd, the registered owner of trade mark number 603096 for "Fruit and vegetables (fresh)" in Class 31, faced an application by Belgrove Holdings Pty Ltd and Millwood Holdings Pty Ltd to remove the mark from the Register under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) for non-use. The application sought removal in respect of all goods for which the mark was registered. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the registered owner, Scalvino Pty Ltd, had used the trade mark in Australia in relation to the registered goods during the three-year period ending one month before the filing of the removal application. This involved determining whether the use demonstrated by Scalvino Pty Ltd, which involved alterations to the registered mark, was sufficiently similar to the registered mark to be considered use of the mark with alterations that did not substantially affect its identity. Additionally, the delegate had to consider whether the use established was in relation to all the goods for which the mark was registered, or only a subset thereof, and whether to exercise discretion under section 101(3) of the Act.

The delegate found that Scalvino Pty Ltd had provided sufficient evidence of use of the trade mark in relation to fresh avocados, which constituted a subset of the registered goods. This use, evidenced by packaging and wholesale market displays, was deemed to be with alterations that did not substantially affect the identity of the registered mark, as the essential distinctive element, "AUS-AVO," remained prominent. The delegate also found that the use was bona fide and commercial in nature, and that the remittance advices, despite being addressed to a business name, were appropriately linked to the registered owner. However, the evidence of use was confined solely to fresh avocados, and not the broader category of "Fruit and vegetables (fresh)" as registered. Consequently, the delegate concluded that the grounds for removal under section 92(4)(b) were partially established, as the mark had not been used for all the goods in respect of which it was registered.

The delegate determined that the trade mark should be removed from the Register in respect of all goods within Class 31, except for fresh avocados. The delegate declined to exercise discretion under section 101(3) to maintain the registration for the broader specification, as the evidence of use was limited to a specific fruit. Therefore, the trade mark was ordered to be removed for all goods except "avocados (fresh)".