Re: Opposition by Raven Products Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by ASSA ABLOY Australia Pty Limited for removal of trade mark number 715187 (6, 17) - Pemko - in the..

This matter concerned an application by ASSA ABLOY Australia Pty Limited for the removal of trade mark number 715187, registered as "Pemko" in classes 6 and 17, from the Register under section 92 of the *Trade Marks Act 1995* (Cth). Raven Products Pty Ltd opposed this application. The hearing officer, Nicholas Smith, was required to determine whether the trade mark had been used in Australia during the relevant period and, if not, whether to exercise discretion not to remove it from the Register.

The central legal issue was whether Raven Products Pty Ltd, as the registered proprietor, had established use of the trade mark "Pemko" in Australia during the relevant period, either directly or through authorised use by a third party, DTAC. If use was not established, the hearing officer had to consider whether to exercise discretion under section 101(3) of the Act to allow the trade mark to remain on the Register, balancing public interest in the integrity of the Register with private commercial interests.

The hearing officer found that while DTAC had used the trade mark for certain goods in class 17, specifically "adhesive strips; self adhesive tapes," there was no evidence to establish that this use was authorised by Raven Products Pty Ltd under sections 7 and 8 of the Act. Consequently, the use by DTAC could not be attributed to the registered proprietor. Furthermore, the hearing officer was not satisfied that stair treads and adhesive anti-slip tape, for which DTAC had also used the mark, fell within the goods for which the trade mark was registered in class 6. As there was no evidence of authorised use by the registered proprietor for any of the registered goods, and no evidence of any intention to use the mark in the future, the hearing officer concluded that the discretion not to remove the trade mark was not appropriate.

Accordingly, the hearing officer ordered that trade mark registration number 715187 be removed from the Register in respect of all goods for which it was registered, with removal to occur one month from the date of the decision, subject to any appeal. Costs were awarded in favour of ASSA ABLOY Australia Pty Limited.