SG Fleet Australia Pty Ltd v Mark Telfer

This matter concerned an application by SG Fleet Australia Pty Ltd (the Applicant) to remove a trade mark from the Register, opposed by Mark Telfer (the Opponent). The dispute centred on whether the Opponent had used the trade mark in Australia during the relevant period, as required to prevent its removal. The decision was made by the Registrar.

The primary legal issue before the Registrar was whether the Opponent had established use of the trade mark in Australia pursuant to section 100 of the relevant Act, either through actual use or circumstances constituting an obstacle to use. If use could not be established, the Registrar was required to consider whether to exercise discretion under section 101(3) of the Act to allow the trade mark to remain on the Register.

The Registrar found that the Opponent had failed to establish use of the trade mark in Australia during the relevant period. Evidence of use in the United Kingdom was not sufficient, and a reference to the trade mark on the Opponent's website in 2012 was outside the relevant period and appeared to be an error, as the Opponent was not offering services under the mark at that time. Internal documents suggesting an intention to use the trade mark were heavily redacted and did not provide sufficient evidence of a concluded intention to use it in Australia. As the ground for removal was established and there were no obstacles to use, the Registrar then considered the discretion under section 101(3). The Registrar noted that the policy of the Act favours the removal of unused trade marks to maintain the integrity of the Register, but acknowledged that section 101(3) grants a broad discretion to permit a trade mark to remain on the Register even if grounds for removal are made out, if it is reasonable to do so.