Re: Opposition by Ross Walmsley to application by Gopro Inc to remove trade mark number 1535525 (25, 32) - GOPRO G - in the name of Ross Walmsley

This matter concerned an application by GoPro Inc (the Removal Applicant) to remove trade mark number 1535525, GOPRO G, from the Register of Trade Marks, which was registered in the name of Ross Walmsley (the Removal Opponent). The application was heard by Louise Tuohy, as delegate of the Register of Trade Marks, in Canberra on 7 July 2021.

The legal issues before the delegate were whether the trade mark should be removed from the Register on the grounds of non-use, specifically under sections 92(4)(a) and 92(4)(b) of the relevant Act. The Removal Applicant pressed the ground under section 92(4)(b), which relates to a trade mark remaining registered for a continuous period of three years ending one month before the non-use application is filed, without the registered owner having used the trade mark in Australia in good faith in relation to the specified goods and services. The relevant period for this ground was the three years ending on 28 December 2019.

The delegate noted that the onus was on the Removal Opponent to rebut the allegation of non-use under section 92(4)(b). To do so, the Removal Opponent needed to establish that the trade mark had been used in good faith in relation to the goods during the relevant period. The delegate referred to the principle that "use in good faith" means real, as opposed to token, use in a commercial sense, and that a single bona fide use can be sufficient to rebut an allegation of non-use, provided it is supported by documentary evidence. The Removal Applicant did not file any evidence, while the Removal Opponent filed a declaration with exhibits.