Seekers Australia Pty Ltd v Seal Trademarks Pty Ltd

This matter came before Nicole Worth, a delegate of the Registrar of Trade Marks, concerning an application to remove the trade mark ELEMENTS (registration number 668745) from the Register. The opponent, Seekers Australia Pty Ltd, sought to maintain the registration, while the removal applicant contended that the trade mark had not been used and that there were no circumstances preventing its use during the relevant non-use period.

The primary legal issue before the delegate was whether the trade mark ELEMENTS had been used in Australia in relation to the goods for which it was registered, or if there were circumstances that constituted an obstacle to its use, during the period of non-use. Section 101 of the relevant Act provided the framework for the Registrar's decision to remove a trade mark from the Register if satisfied that the grounds for removal had been established.

The delegate considered the evidence presented, including the opponent's prior trading history with the ELEMENTS trade mark in swimwear from 1995 to 2004. However, the delegate was not satisfied that the trade mark had been used in relation to "clothing, footwear and headgear including beachwear" or the reduced scope of "beachwear." While a project plan mentioned beachwear items generally, the introduction catalogue sent to the market only referred to swimwear. Consequently, the delegate found that there had been no use of the ELEMENTS trade mark within the non-use period for these broader categories of goods, nor any circumstances that constituted an obstacle to such use.

Accordingly, the delegate directed that registration number 668745 be removed from the Register of Trade Marks for all goods for which it was registered, except for "swimwear." The delegate also declined to make an order as to costs, determining that each party should bear its own costs, as neither party had been entirely successful.