Opposition by YEY Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Active Skin Pty Ltd to remove trade mark number 1094648 (class 35, 44) – ACTIVESKIN (Figurative) - in the name of YEY...

This matter concerned an opposition by YEY Pty Ltd (the Removal Opponent) to an application by Active Skin Pty Ltd (the Removal Applicant) under section 92 of the *Trade Marks Act 1995* (Cth) to remove trade mark number 1094648, registered in the name of YEY Pty Ltd, from the register. The trade mark, ACTIVESKIN (Figurative), was registered in classes 35 and 44. The hearing was conducted by Timothy Brown, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Removal Opponent had used its trade mark in Australia in relation to the registered goods and services during the three-year period ending one month before the filing of the removal application. The Removal Opponent bore the onus of rebutting the allegation of non-use by demonstrating that the trade mark had been used in good faith in relation to the registered services or that non-use was due to circumstances that were an obstacle to use.

The delegate found that the Removal Opponent had successfully rebutted the allegation of non-use in respect of the Class 44 services and the online retail sale of specific goods in Class 35. However, the delegate was not satisfied that it was reasonable to exercise the Registrar's discretion to allow the registered services to remain unamended, particularly concerning wholesale services in Class 35. Consequently, the delegate directed that the trade mark registration be amended to reflect the services for which use had been demonstrated. The delegate also ordered that no costs be awarded, as both parties had achieved a degree of success.