Red Nose Limited v National Cancer Foundation

Red Nose Limited (the applicant) sought the removal of nine trade marks registered by the National Cancer Foundation (the respondent) under sections 92(4)(a) and 92(4)(b) of the *Trade Marks Act 1995* (Cth). The applicant alleged that the respondent had not used the trade marks in relation to the goods and services for which they were registered. The matter came before Robert Wilson in his capacity as delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the respondent had made genuine use of the nine trade marks in Australia in relation to the goods and services for which they were registered. Where use was established for some but not all of the registered goods and services, the delegate also had to consider whether to exercise the Registrar's discretion to amend the specifications of the trade marks or to order their removal. The interplay between section 234 (grounds for removal) and section 92 (removal from the register) of the Act was also a consideration.

The delegate found that for one trade mark, the opposition was entirely unsuccessful, meaning the respondent had demonstrated genuine use for all registered goods and services. For another trade mark, the opposition was entirely successful, with no evidence of genuine use presented. For the remaining seven trade marks, the delegate found that genuine use had been established in relation to some, but not all, of the registered goods and services. In these circumstances, the delegate determined that it was not appropriate to exercise the Registrar's discretion to amend the specifications of the trade marks. Instead, the delegate ordered that one trade mark be removed entirely, one trade mark remain unamended, and the specifications of the remaining trade marks be amended to reflect the goods and services for which genuine use had been proven.