Portugal Cork Co Pty Limited v Newport Cork (Aust) Pty Limited Trading as Portugal Cork (Aust)

This matter concerned an application by Portugal Cork Co Pty Limited to remove trade mark registration number 326031 for the mark PORTCO from the Register on the grounds of non-use. The application was opposed by Newport Cork (Aust) Pty Limited, trading as Portugal Cork (Aust). The registered proprietor of the mark, which is registered for "Adhesives" in Class 1, is a different entity to the applicant for removal. The applicant contended that the mark was registered without an intention to use it in good faith and that there had been no use in good faith by the proprietor or a registered user for a continuous period of three years prior to the application.

The court was required to determine whether the applicant was a "person aggrieved" by the registration, whether a prima facie case of non-use had been established, and if so, whether the opponent had discharged its onus to demonstrate use or establish grounds for the Registrar's discretion to retain the mark. The applicant argued that it was an aggrieved person as the registered mark had been cited as a bar to its own trade mark application. The applicant further submitted that the registered proprietor had ceased trading in 1989 and had been deregistered in 1993, thus no use could have occurred during the relevant period. The opponent claimed to have purchased the mark in 1986 and used it in conjunction with two other companies in different states since that time, asserting joint ownership.

The delegate found that the applicant had established its status as a person aggrieved. While the onus initially rests with the applicant for removal to prove non-use, the delegate determined that the applicant had presented sufficient undisputed evidence, including declarations detailing the proprietor's deregistration and cessation of trading, to establish a prima facie case of non-use. This shifted the onus to the opponent to demonstrate use or special circumstances. The opponent's submissions regarding use were unsupported by evidence and did not demonstrate use by the registered proprietor or a registered user as contemplated by the Act. Furthermore, no evidence of special circumstances preventing use was presented.

The delegate concluded that the public interest favoured removal of the mark, particularly given the registered proprietor's deregistration and the potential for public deception regarding ownership due to the claimed use by multiple unconnected entities. The opponent had failed to discharge its onus to show why the mark should not be removed on the grounds of non-use, and had not provided any reasons for the Registrar's discretion to retain the mark. Accordingly, the delegate ordered that the registration be removed from the Register for all goods for which it was registered and awarded costs to the applicant.