Pedita Australia Pty Ltd v Knickerbox Limited

This case concerned an opposition by Knickerbox Limited to an application by Pedita Australia Pty Ltd to remove trade mark registration number B527599, for the mark KNICKERBOX, from the Register. Pedita Australia sought removal on the grounds that the mark was registered without an intention to use it in good faith and that there had been no use in good faith for a period of at least three years prior to the removal application. Knickerbox Limited opposed the removal, denying the grounds for removal and asserting that the applicant was not an aggrieved party, that removal was not in the public interest, and that the mark had not been abandoned.

The delegate was required to determine whether Pedita Australia had standing as an "aggrieved person" and, if so, whether the trade mark KNICKERBOX had been used in good faith in Australia during the relevant three-year period. The delegate also had to consider whether there were any special circumstances preventing use, and whether to exercise discretion in favour of maintaining the registration despite grounds for removal. The legal principles applied included the definition of a "person aggrieved" and the onus of proof for establishing non-use of a trade mark, as well as the interpretation of "use in the course of trade" and "special circumstances" under the relevant provisions of the Act.

The delegate found that Pedita Australia had established standing as an aggrieved person, noting its active presence in the Australian clothing industry and the fact that the opponent's registration was cited as an objection to the applicant's own trade mark application. The delegate concluded that Pedita Australia had presented sufficient evidence to establish a prima facie case of non-use of the mark KNICKERBOX in relation to "clothing" during the prescribed period. The delegate found that the opponent's evidence of use, primarily through advertisements in overseas publications, did not constitute use in the course of trade in Australia, as there was no evidence of an actual trade, offer to trade, or existing intention to offer or supply goods bearing the mark in Australia. Furthermore, no special circumstances were established to justify non-use. The delegate also determined that the reasons advanced by Knickerbox Limited for exercising discretion in its favour, based on principles from the *Hermes* case, were not applicable to the present circumstances, particularly the lack of concrete evidence of reputation or actual sales in Australia.

Consequently, the delegate ordered that the Register be amended to remove the trade mark registration B527599 in respect of "clothing", but to retain it in respect of "boots, shoes and slippers", as no case for non-use had been established for those goods. Each party was ordered to bear its own costs.