Sansai Japan Australia PTY. Ltd v SMD Technologies Australia Pty Ltd

This matter concerned an application by Sansai Japan Australia Pty Ltd (the Applicant) to expunge two trade mark registrations held by SMD Technologies Australia Pty Ltd (the Opponent) for the VOLKANO mark. The Applicant sought removal of the registrations under section 92(4)(a) of the *Trade Marks Act 1995* (Cth) on the grounds that the Opponent had no intention to use the trade marks in Australia at the time the applications for registration were filed.

The primary legal issue before the court was whether the Opponent had the requisite intention to use the VOLKANO trade marks in Australia at the time of filing their applications for registration. This involved an assessment of the onus of proof in such proceedings and the nature of the evidence required to establish a lack of intention to use.

The court considered the principles established in *Aston v Harlee Manufacturing Co* and *Structureco Inc v Starite Distributors Pty Ltd*, which confirm that the onus rests on the party seeking removal to prove the absence of intention to use. However, this onus is not considered arduous. The court noted that the mere filing of an application for registration is prima facie evidence of an intention to use. To discharge the onus, the party seeking removal may need to present evidence supporting a circumstantial case of a lack of good faith or intention to use. The evidence presented by the Applicant, including photos of products and shipping documents, was not considered relevant to the specific issue of the Opponent's intention at the time of filing the applications.

The court found that the evidence did not establish that the Opponent lacked the intention to use the VOLKANO trade marks in Australia at the time the applications were filed. Consequently, the application for removal was dismissed.