Pt Marks Pty Ltd v Mikaela Borg - [2024] ATMO 118

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by PT Marks Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Mikaela Borg to remove trade mark number 1075626 (class 14) - MIKI - in the name of PT Marks Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Removal Opponent: Self-represented

Removal Applicant: Jacqui Pryor of Mark My Words Trademark Services Pty Ltd

Decision:

2024 ATMO 118

Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – use of trade mark not established in the relevant period – no obstacles to use established – discretion not exercised for any goods –– registration to be removed

Background

This matter concerns an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] seeking removal of a trade mark from the Australian Register of Trade Marks (‘Register’) for non-use. I extract details of the trade mark below:

Trade mark number:     1075626
Trade mark:  MIKI (‘Trade Mark’)
Owner:  PT Marks Pty Ltd (‘Removal Opponent’)
Filing date:  15 September 2005
Goods:  Class 14: Cases for watches (presentation); clocks and watches, electric; containers especially adapted for presentation and display of jewellery, watches, etc.; movements for clocks and watches; watches (‘Removal Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) (‘Act’) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

On 30 August 2022 Mikaela Borg (‘Removal Applicant’) filed a request for removal of the Trade Mark for non-use under s 92(4)(b) for all of the Removal Goods.
On 24 October 2022 the Removal Opponent filed its Notice of Intention to Oppose the application for removal. On 11 November 2022 the Removal Opponent filed its Statement of Grounds and Particulars. On 22 December 2022 the Removal Applicant filed her Notice of Intention to Defend.
On 27 March 2023 the Removal Opponent filed its Evidence in Support (‘EIS’) being a declaration of Pauline Wrobel, director at the Removal Opponent and director of Sax International Pty Ltd (‘Sax’), dated 24 March 2023, with Exhibits A to G (‘Wrobel’). On 31 March 2023, the Removal Applicant’s attorney advised by letter that the Removal Applicant would not be filing Evidence in Answer.
On 5 May 2023, the Removal Applicant requested to be heard by way of written submissions only. On 23 January 2024, the Removal Opponent requested to be heard by way of written submissions. On 13 February 2024, the Removal Opponent filed its written submissions which were prepared by Pauline Wrobel. On 27 February 2024 the Removal Applicant filed written submissions prepared by Jacqui Pryor of Mark My Words Trademark Services Pty Ltd. I am to decide the matter as a delegate of the Registrar of Trade Marks based on the evidence and submissions discussed above.

Relevant period and onus

Section 92 relevantly provides:
92…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Pt Marks Pty Ltd v Mikaela Borg and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2024] ATMO 118
Decision Date: 28 June 2024

CaseChat Overview and Summary

Pt Marks Pty Ltd (the applicant) sought the removal of a registered trade mark from the Register of Trade Marks under section 92(4)(b) of the *Trade Marks Act 1995* (Cth). The respondent, Mikaela Borg, was the registered owner of the trade mark. The applicant alleged that the trade mark had not been genuinely used in Australia in relation to the goods for which it was registered during the relevant period.

The primary legal issue before the court was whether the applicant had established that the trade mark had not been genuinely used in Australia in relation to the registered goods during the period of three years immediately preceding the date of the application for removal. A secondary issue was whether, if non-use was established, there were any circumstances that provided obstacles to the use of the trade mark, which might justify the court exercising its discretion not to order removal.

The court found that the applicant had discharged its onus of proving non-use of the trade mark in relation to the registered goods. Evidence presented by the applicant demonstrated a lack of commercial activity and marketing efforts associated with the trade mark during the relevant period. Furthermore, the court determined that no circumstances had been established that constituted obstacles to the use of the trade mark, which would have warranted the exercise of discretion in favour of the respondent.

Consequently, the court ordered that the registration of the trade mark be removed from the Register of Trade Marks.

Orders