P & T Basile Imports Pty Ltd v Aceto Balsamico Del Duca Di Adriano Grosoli S.R.L

This matter came before Alison Windsor, a Hearing Officer of the Trade Marks Hearings, concerning an application by P & T Basile Imports Pty Ltd (the applicant) to remove a trade mark from the Register for non-use, pursuant to Part 9 of the Act. The trade mark was registered to Aceto Balsamico Del Duca Di Adriano Grosoli S.R.L (the registered owner). The dispute centred on whether the registered owner had genuinely used the trade mark in Australia in relation to the goods for which it was registered.

The legal issues before the Hearing Officer were whether the trade mark should be removed from the Register on the grounds of non-use, as provided for in sections 92, 96, 100, and 101 of the Act. Specifically, the Hearing Officer had to determine if the applicant had established that, on the day the application for registration was filed, the registered owner had no intention in good faith to use the trade mark in Australia, or to authorise its use, and had not used it in good faith in Australia before the relevant period. Alternatively, the Hearing Officer considered whether the trade mark had remained registered for a continuous period of three years ending one month before the application, during which time it had not been used in Australia in good faith.

The Hearing Officer reasoned that there was no evidence of the registered owner using its trade mark on goods beyond those demonstrated in its evidence, nor was there any indication of an intention to extend its use beyond the current range, except possibly into the sale of rice. Given this limited use after 12 years in the Australian market, the Hearing Officer considered it appropriate to restrict the registration to the goods on which use had been demonstrated, along with a limited range of similar goods within the existing registration that represented logical extensions of the registered owner's current offerings.

Consequently, the non-use application was partially successful. The registration was ordered to be restricted to specific goods within Class 29 (preserved, dried and cooked fruit and vegetables; edible oils and fats) and Class 30 (flour, and preparations made from cereals namely pasta and pasta products, gnocchi, polenta and rice; vinegars including balsamic vinegar) after one month from the date of the decision, unless an appeal was filed. As neither party fully achieved its aims, each was ordered to bear its own costs.