Saputo Dairy Australia Pty Ltd v Leprino Foods Company

This matter concerned an application by Leprino Foods Company for the removal of a trade mark from the Register, opposed by Saputo Dairy Australia Pty Ltd. The application for removal was made under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) on the grounds of non-use. The delegate of the Registrar of Trade Marks, Nicholas Smith, considered the evidence and submissions presented by both parties.

The primary legal issue before the delegate was whether Saputo Dairy Australia Pty Ltd had used its registered trade mark in Australia in good faith during the three-year period ending one month before Leprino Foods Company filed its application for removal. This period was identified as 11 May 2020. The delegate also considered whether, in the exercise of discretion, the trade mark should be removed or if conditions or limitations should be imposed on its registration.

The delegate found that Saputo Dairy Australia Pty Ltd had not provided sufficient evidence to demonstrate use of the trade mark during the relevant period. While a declaration was filed, it contained vague claims of confidentiality and lacked specific documentary evidence of use. The delegate noted that the opponent had used the trade mark in the past and expressed an intention to use it in the future, but this was not persuasive enough to avoid removal. The delegate concluded that the trade mark's reputation was not such that its removal would cause consumer confusion or practically impact the opponent's interests. Consequently, the delegate exercised discretion not to prevent the removal of the trade mark.

The delegate directed that the registration be removed from the Register one month from the date of the decision, subject to any appeal. Costs were awarded to the applicant, Leprino Foods Company, against the opponent, Saputo Dairy Australia Pty Ltd.