Orlando Farese v Giacomo letto and Justin Lamattina

Orlando Farese (the Removal Opponent) sought to maintain the registration of trade mark 1375416, while Giacomo Letto and Justin Lamattina (the Removal Applicants) applied for its removal from the Register. The dispute concerned the use of the trade mark in relation to certain registered services. The matter was heard by Louise Tuohy, a Hearing Officer in the Trade Marks and Designs division.

The Removal Applicants sought removal of the trade mark under section 92 of the *Trade Marks Act 1995* (Cth), specifically relying on grounds under sections 92(4)(a) and 92(4)(b), which relate to non-use of the trade mark. The core legal issues were whether the Removal Opponent had established use of the trade mark in relation to the registered services, and if not, whether the Hearing Officer should exercise discretion to allow the trade mark to remain registered.

The Hearing Officer found that the Removal Applicants had established the ground for removal under section 92(4)(b) of the Act, as no use of the trade mark had been demonstrated in respect of the registered services. The Hearing Officer considered the public interest and the private interests of the parties. She concluded that the public interest was not served by allowing an unused trade mark to remain registered, particularly when the Removal Opponent had not demonstrated an intention to provide the services. The Removal Opponent also failed to draw attention to any circumstances favouring the exercise of discretion to preserve the registration, and the Hearing Officer was unpersuaded that removal would cause consumer confusion or practically impact the Removal Opponent's interests. Consequently, the discretion to preserve the registration was declined.

The Hearing Officer directed that trade mark registration 1375416 be removed from the Register in respect of the registered services. Costs were awarded against the Removal Opponent, following the usual principle that costs follow the event.