Re: Opposition by Alice Corporation to application pursuant to section 92 of the Trade Marks Act 1995 (Cth) by Fivepals, Inc. to remove trade mark number 816557 (classes 9, 36 and 42) – Alice Inspired (Word) - in...

This matter concerns an opposition by Alice Corporation to an application by Fivepals, Inc. to remove trade mark number 816557, registered as "Alice Inspired" in classes 9, 36, and 42. The opposition was heard by the Registrar.

The primary legal issue before the Registrar was whether Fivepals, Inc. had established that the trade mark had not been used in good faith by the registered owner during the relevant period, as required by section 92 of the *Trade Marks Act 1995* (Cth). Alice Corporation sought to rely on certain evidence to demonstrate use, and alternatively, requested the Registrar to exercise discretion under section 101(3) of the Act to prevent removal if use could not be established.

The Registrar considered evidence submitted by Alice Corporation, including a declaration that detailed commercialisation activities since the 1990s and involvement in US patent litigation. However, the Registrar noted that the declaration did not provide specific examples of the trade mark's use on websites or stationery, nor did it nominate a time period for such use. Furthermore, no invoices demonstrating use were available. Late evidence submitted by Alice Corporation was not considered as it did not disclose any instance of the trade mark's use and was filed without an application to do so. The Registrar applied the principle that to rebut an allegation of non-use under section 92(4)(b), use must be established, and if a single act of use is relied upon, it requires overwhelmingly convincing proof.

As Alice Corporation failed to provide sufficient evidence of bona fide use of the trade mark, the Registrar found that the threshold for opposing the removal application under section 92(b) had not been met. Consequently, the Registrar ordered that the trade mark be removed from the Register for classes 9, 36, and 42.