Philip Wait v Pinpoint Limited

This matter concerned an application by Pinpoint Limited for the removal of the trade mark registration number 976247, held by Philip John Wait, from the Register on the grounds of non-use. Mr Wait, who had been involved in the medical alarm industry for approximately thirty years, had applied for the registration of the PINPOINT trade mark in 2003 with the intention of marketing a combined personal medical alarm and locating monitor. He had also registered a company and a domain name under the same name.

The primary legal issue before the court was whether Mr Wait had established sufficient use of the PINPOINT trade mark to justify its continued registration, or whether exceptional circumstances warranted its retention on the Register despite a lack of use. The court was required to determine if Mr Wait had discharged the onus of proving that it was reasonable not to remove the trade mark, considering the extensive period of non-use.

The court found that Mr Wait had not provided sufficient evidence to demonstrate use of the trade mark. Despite having had nearly nine years since the trade mark's registration to commercialise his concept, the court noted that there appeared to be little prospect of this occurring. The court reasoned that the discretion to retain a trade mark on the Register under section 101 of the relevant Act, while broad, required positive satisfaction that it was reasonable not to remove it. In this instance, the court was not positively satisfied, particularly as the removal applicant, by its name, indicated its own interest in the trade mark, thus mitigating any potential public confusion from its removal. The court concluded that the circumstances were precisely those for which the non-use removal provisions were designed.

Consequently, the court directed that registration number 976247 be removed from the Register one month from the date of the decision, with a provision for deferral in the event of an appeal.