Shiang's International Pte Ltd v Avita Medical, Inc

This decision concerns an application by Shiang's International Pte Ltd (the Applicant) to remove Trade Mark registration number 1189499 from the Register of Trade Marks, on the grounds of non-use. Avita Medical, Inc (the Opponent) was the registered proprietor of the trade mark. The Applicant contended that the trade mark had not been used in Australia in relation to the goods for which it was registered.

The primary legal issue before the Hearing Officer was whether the Opponent had demonstrated sufficient use of the trade mark in Australia in the course of trade for the specified goods during the relevant period. If non-use was established, the secondary issue was whether the Hearing Officer should exercise discretion not to remove the trade mark from the Register, considering factors such as abandonment, residual reputation, and the conduct of the parties.

The Hearing Officer found that the totality of the evidence did not satisfy her that the trade mark had been used in the course of trade in Australia for the registered goods. Much of the evidence related to a different trade mark or a business model rather than the specific trade mark in question, and there was a lack of evidence of relevant use within Australia. Despite a lengthy period of alleged trade, no sales or enquiries from Australian customers were demonstrated. Consequently, the ground for removal was established. The Hearing Officer then considered the discretion not to remove the mark, weighing factors such as the absence of abandonment and residual reputation against the public interest in removing unused trade marks. The balance of favour tended towards removal.

Accordingly, the Hearing Officer directed that registration 1189499 be removed from the Register one month from the date of the decision, subject to any appeal. The Opponent was ordered to pay the Applicant's costs.