Sato Holdings Corporation v West Affum Holdings Corporation

Sato Holdings Corporation, the registered owner of the trade mark "PJM ASSURE" (Registration No. 1500473), was the removal opponent in proceedings before a delegate of the Registrar of Trade Marks. West Affum Holdings Corporation, the removal applicant, sought to remove the trade mark from the Australian Register of Trade Marks in respect of all registered goods, based on grounds of non-use under sections 92(4)(a) and 92(4)(b) of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the delegate was whether the removal applicant had established grounds for the removal of the trade mark due to non-use. This involved assessing the evidence presented by the removal opponent to demonstrate use of the trade mark in relation to the registered goods. A preliminary issue also arose concerning the removal opponent's attempt to introduce out-of-time declaratory evidence.

The delegate considered the evidence filed by the removal opponent, which included a declaration from its Managing Director. The removal applicant did not file evidence in answer. After considering the submissions of both parties, the delegate was not persuaded that the removal opponent had met its burden of proof to demonstrate use of the trade mark. The delegate found no evidence of any residual reputation in the trade mark that would lead to consumer confusion, particularly given the mark had been registered for over a decade.

Consequently, the delegate directed that trade mark registration 1500473 be removed from the Register in respect of all the registered goods, one month from the date of the decision. The removal opponent was also ordered to pay the costs of the removal applicant.