Re: Opposition by Factory Direct Garage Doors Pty. Ltd. to an application under section 92 of the Act by Starship Australia Pty Ltd for removal of trade mark number 1035965 (6) Gryphon Garage Doors (Figurative) in..

This matter concerned an application by Starship Australia Pty Ltd for the removal of trade mark number 1035965, registered as "Gryphon Garage Doors (Figurative)", from the register. The opposition to this removal was brought by Factory Direct Garage Doors Pty. Ltd. The hearing officer, Nicholas Smith, was tasked with determining whether the trade mark should be removed.

The central legal issue was whether the registered owner, Mr. Cervi, had used the trade mark in Australia during the relevant period, either directly or through an authorised third party, as required by section 100 of the Act. If such use was not established, the hearing officer had to consider whether to exercise discretion under section 101(3) of the Act to prevent the removal of the trade mark. Specifically, the court needed to determine if the use of the mark by GGD/GHI in relation to garage doors constituted use for all the registered goods, which included various metal door fittings, frames, and handles.

The hearing officer found that while GGD/GHI had used the trade mark for "door panels of metal" (the "Used Goods"), there was no evidence of use for the remaining registered goods, described as "door fittings of metal, door frames of metal and door handles of metal; door closers (non-electric), door bolts, door cases of metal, door knockers, door openers, non-electric, door scrapers, door springs (non-electric) and door stops of metal" (the "Remaining Goods"). Despite the lack of direct use for the Remaining Goods, the hearing officer exercised discretion under section 101(3) to allow the trade mark to remain on the register for all registered goods. This decision was based on the similarity between the Used Goods and Remaining Goods, the potential for confusion if a similar mark were used on the Remaining Goods, and considering factors such as the absence of abandonment, the registered proprietor's residual reputation, and the applicant for removal not having ascertained the register's status.

Consequently, the hearing officer decided that the opposition to the removal of the trade mark was established in respect of the Used Goods. Furthermore, the hearing officer exercised discretion not to remove the trade mark from the register in respect of the Remaining Goods. Costs were awarded against the applicant for removal in accordance with the Trade Marks Regulations 1995.