Plus Technologies Pty Ltd v Swart & Sons Pty Ltd

This matter concerned an application by Plus Technologies Pty Ltd (the Applicant) to remove a trade mark registered by Swart & Sons Pty Ltd (the Opponent) from the Register of Trade Marks under section 92(4)(a) of the *Trade Marks Act 1995* (Cth) on the ground of non-use. The Applicant alleged that on the filing date of the Opponent's trade mark application, the Opponent had no intention in good faith to use the trade mark in Australia, and that the Opponent had not used the trade mark in good faith in Australia prior to the filing of the removal application.

The primary legal issue before the Hearing Officer was whether the Opponent's trade mark had been used in good faith in Australia in relation to the specified goods. The Applicant contended that the Opponent's trade mark was filed in bad faith, asserting that the Opponent was aware of the Applicant's use of a similar mark prior to filing its own application. The Opponent sought to rebut the non-use allegation by demonstrating actual use of its trade mark in good faith during the relevant period.

The Hearing Officer considered evidence of the Opponent's use of its trade mark on its website and social media, including archival website data. It was found that the Opponent had demonstrated use of its trade mark in good faith for software related to fire protection and fire safety, satisfying the requirement of "real, as opposed to token, use in a commercial sense." However, there was insufficient evidence of use for other claimed software goods. The Hearing Officer also considered the Applicant's arguments regarding the Opponent's knowledge of the Applicant's mark, but concluded that mere awareness, without evidence that it coloured the Opponent's commercial use as token or solely for blocking purposes, did not negate good faith use.

Ultimately, the Hearing Officer directed that the Opponent's trade mark registration be amended to limit the specification of goods to those for which good faith use had been established, namely software for the purpose of fire protection and fire safety. The Hearing Officer declined to exercise discretion to allow the trade mark to remain registered for all goods, noting the lack of a request for such discretion and the broad nature of the remaining claims. Costs were not awarded, as both parties achieved a degree of success.