Shan Patterson v Harold Van Haltren

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Shan Patterson to application under section 92 of the Trade Marks Act 1995 (Cth) by Harold Van Haltren to remove trade mark number 2114375 (11, 37, 40) - GERMII - in the name of Shan Patterson

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Shan Patterson

Removal Applicant: Harold Van Haltren

Decision:

2025 ATMO 22

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(a) – intention in good faith to use not established – trade mark to be removed from the Register of Trade Marks

Background

1. On 2 August 2023 Harold Van Haltren (‘Removal Applicant’) filed an application under s 92(4)(a) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) seeking complete removal from the Register of Trade Marks (‘Register’) of the following registered trade mark in the name of Shan Patterson (‘Removal Opponent’):

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the  Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

   Trade mark number:  2114375

   Trade mark:  GERMII (‘Trade Mark’)            

   Filing date:  25 August 2020 (‘Relevant Date’)

   Specification:               Class 11:  Sterilizers; Sterilizing apparatus; Sterilizing devices; Sterilizing machines; Ultraviolet irradiators

   Class 37: Disinfection of premises against bacterial infestation; Germ reduction services

   Class 40: Decontamination of hazardous materials; Surface treatment services

   (‘Registered Goods/Services’)

2. The Removal Opponent filed a Notice of Intention to Oppose the Removal Application on 25 October 2023, followed by its Statement of Grounds and Particulars (‘SGP’) on 25 November 2023. On 9 January 2024 the Removal Applicant filed a Notice of Intention to Defend the Removal Application.

3. The Removal Opponent filed the following declaration as evidence in support (‘EIS’):

   ·Declaration of Shan Patterson, made on 9 April 2024 with Exhibit 1 (‘Patterson 1’).

4. The Removal Applicant filed the following declaration as evidence in answer (‘EIA’):

   ·Declaration of Harold Thomas Van Haltren, made on 15 July 2024 with Exhibits A to E (‘Van Haltren’).

5. The Removal Opponent filed the following declarations as evidence in reply (‘EIR’):

   ·Declaration of Shan Patterson, made on 24 September 2024 with Exhibit 1 (‘Patterson 2’).

   ·Declaration of Lisa Patterson, made on 24 September 2024 (‘LP’).

6. Once time for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Removal Opponent requested a decision without a hearing and paid the appropriate fee. The matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks for a decision based on the written record. I make my decision based on the particulars set out in the SGP, the EIS, EIA and EIR.

   Legislative framework

7. Part 9 of the…