Richard James Pty Ltd v Aktielskabet AF21.November 2001

This matter came before a delegate of the Registrar of Trade Marks concerning an application for removal of a trade mark from the register due to non-use. The opponent, Richard James Pty Ltd, sought to defend its registration against the applicant, Aktielskabet AF21.November 2001. The opponent was represented by Carmen Champion of Counsel, and the applicant by Hamish Bevan of Counsel.

The central legal issues before the delegate were whether the opponent had used the trade mark in Australia or had a bona fide intention to use it at the time of filing the application for registration, and whether there had been bona fide use of the trade mark in the three years preceding the filing of the non-use application. The opponent contended that evidence demonstrated an intention to use and commercial use of the trade mark, sufficient to rebut the non-use allegations, even if such use was prompted by settlement negotiations and the threat of removal. The applicant argued that the evidence of use was insufficient, constituting only colourable or token activity, and that the circumstances surrounding the alleged use indicated it was not in good faith.

The delegate considered the onus of proof, which lay with the opponent under section 100 of the Act. To rebut the allegation of a lack of intention to use, the opponent needed to establish either actual use prior to the non-use application or a bona fide intention to use at the time of the trade mark application. To discharge the onus for section 94(4)(b), evidence of bona fide use within the three years preceding the non-use application was required. The delegate noted the opponent's submission that even use made for the purpose of protecting a registration from a non-use challenge could be considered bona fide, citing *Electrolux v Electrix Ltd*. Conversely, the applicant argued that the limited nature of the use and the location of the purchaser suggested a lack of good faith.