Recreational Tourism Group Pty Limited v Home-Lee Limited

This decision concerns an application by Home-Lee Limited for the partial removal of a trade mark from the Register, opposed by Recreational Tourism Group Pty Limited. The dispute arose from Home-Lee Limited's application to remove certain goods from Recreational Tourism Group Pty Limited's registered trade mark, registration number 952515. The hearing officer, Nicholas Smith, acting as a delegate of the Registrar of Trade Marks, considered whether the trade mark had been used in relation to the goods for which removal was sought.

The primary legal issues before the hearing officer were whether Recreational Tourism Group Pty Limited had used its trade mark in relation to the "Removed Goods" during the relevant period, and if not, whether the Registrar should exercise discretion to prevent the removal of the trade mark from the Register for those goods. Specifically, the court had to determine if there was sufficient evidence of use or a significant reputation acquired by the trade mark in relation to the Removed Goods to warrant its continued registration, or if removal would negatively impact the Opponent's interests or lead to consumer confusion.

The hearing officer found that while Recreational Tourism Group Pty Limited may have used the trade mark for the Removed Goods prior to the relevant period, there was no evidence of significant use, such as sales or substantial advertising, during that period. Consequently, the trade mark had not acquired a significant reputation in relation to those goods that would cause consumer confusion or practically impact the Opponent's interests if removed. The hearing officer noted that the Opponent primarily offered accommodation services under the trade mark, and the removal of the specific goods would not affect the registration for classes 39 and 43 services. Given the importance of maintaining the integrity of the Register and the lack of evidence of significant use or intention to use the trade mark after the relevant period, the hearing officer concluded that it was not appropriate to exercise discretion to prevent the partial removal.

Accordingly, the hearing officer directed that the registration be amended one month from the date of the decision to remove the specified goods, with the trade mark remaining registered for classes 39 and 43 services. The applicant, Home-Lee Limited, was awarded costs against the Opponent. The partial removal was stayed pending any appeal.