Re: Opposition by G. & K. Fine Foods Pty Ltd to an application under section 92 of the Act by J DeLuca Fish Company, Inc. for removal of trade mark number 1304059 (29, 30) - by Delucas- in the name of Royal Foods..

This matter concerned an application by J DeLuca Fish Company, Inc. (the applicant) for the removal of trade mark number 1304059, registered in the name of Royal Foods (the opponent), from the Register under section 92 of the Act. The dispute arose from the opponent's opposition to this removal application. The decision was made by Nicholas Smith.

The primary legal issue before the court was whether the opponent had used the trade mark in Australia during the relevant period, as required by section 100 of the Act, to resist the application for removal under section 92(4)(b). This involved determining whether the opponent's use of a modified mark, "DELUCA'S," constituted use of the registered trade mark, "By Delucas," by considering whether the alterations did not substantially affect the identity of the trade mark under section 7(1) of the Act. The court also considered whether, in the event of insufficient use, it should exercise its discretion under section 101(3) to prevent removal from the Register.

The court found that while the opponent had used the "DELUCA'S" mark for certain packaged meals, it had not used the exact registered mark "By Delucas" during the relevant period, having refreshed its brand in 2015. Applying the test for substantial identity, the court determined that the alteration of removing "By" and changing the spelling from "Delucas" to "Deluca's" did not maintain substantial identity with the registered trade mark. Consequently, the opponent had not established use of the registered trade mark. Furthermore, the court declined to exercise its discretion to prevent removal, finding that the opponent had abandoned the registered trade mark in 2015 and that its private commercial interests were insufficient to outweigh the public interest in the integrity of the Register, particularly given the lack of evidence of use of the registered trade mark on the registered goods.

The court ordered that the trade mark be removed from the Register in respect of all goods for which it was registered.