Pierson?s Pro-Health Pty Ltd v Allan Sutton

This decision concerned an application by Pierson’s Pro-Health Pty Ltd (the applicant) to remove trade mark no. 1134519 from the Register, brought under section 92(4)(a) of the *Trade Marks Act 1995* (Cth). The application was opposed by Allan Sutton (the opponent). The matter was heard by Heath Wilson.

The central legal issue before the court was whether the opponent had demonstrated an intention to use the trade mark in good faith in Australia at the time of filing the application for registration. The applicant contended that the opponent lacked such an intention, which would render the trade mark vulnerable to removal.

The court considered the evidence presented regarding the opponent's intention and commercial use of the trade mark. It was determined that the opponent intended to use the trade mark in a commercial sense at the time of filing and had commenced such use. The court found that this intention and use were not "fictitious or colourable." Even if there were doubts about the opponent's common law ownership of the trade mark, this would not necessarily negate the good faith intention to use it. The court applied section 101 of the Act, which outlines the general principles for determining opposed applications, and concluded that the opponent had discharged the onus of establishing the requisite intention to use the trade mark in good faith.

Consequently, the court found that the application for removal under section 92(4)(a) of the Act had not been successful and was therefore dismissed. The opponent, having been successful, was awarded costs against the applicant in accordance with Schedule 8 of the *Trade Marks Regulations 1995*.