Sartori Company v Consorzio per La Tutela Del Formaggio Asiago

The Sartori Company, as the registered owner of the trade mark "SARTORI ASIAGO" for Asiago-style cheese, opposed an application by Consorzio Per La Tutela Del Formaggio Asiago to remove its trade mark from the Register for non-use. The application for removal was made under section 92(4)(b) of the *Trade Marks Act 1995* (Cth), which requires the trade mark to have remained registered for a continuous period of three years ending one month before the application date, during which the registered owner did not use the trade mark in Australia. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether The Sartori Company had used its registered trade mark "SARTORI ASIAGO" in Australia in good faith during the relevant three-year period preceding the removal application. The relevant period was from 2 May 2018 to 1 May 2021. The onus was on The Sartori Company to rebut the allegation of non-use. The delegate was required to consider whether any use of variations of the trade mark, or use of the trade mark with additions or alterations, constituted use of the registered trade mark for the purposes of the Act.

The delegate considered evidence of an order placed in September 2018 and fulfilled in October 2018, involving the shipment of ASIAGO-style cheese to an Australian distributor, Washed Rind Pty Ltd. This evidence included invoices and shipping documents. However, the delegate found that the "SARTORI device trade mark" and the "composite trade mark" used on the packaging were not substantially identical to the registered trade mark "SARTORI ASIAGO". While the "SARTORI plain word trade mark" on one invoice was considered substantially identical to the registered mark, the delegate was not satisfied that its use was in relation to the registered goods, finding it related to wholesale or retail of the product. Furthermore, a product description "SARTORI ROSEMARY & OLIVE OIL ASIAGO" used in a subsequent invoice was found to have additions ("ROSEMARY & OLIVE OIL") that substantially altered the identity of the registered trade mark, as these ingredients were not merely descriptive but indicated specific components of the product.

Consequently, the delegate concluded that The Sartori Company had not demonstrated use of the registered trade mark "SARTORI ASIAGO" in Australia during the relevant period. The delegate found that the evidence did not establish use of the trade mark as registered, nor use of variations that did not substantially affect its identity. Accordingly, the delegate ordered that the trade mark "SARTORI ASIAGO" be removed from the Register.