Pt Marks Pty Ltd v Mikaela Borg

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.