Shop-Vac Corporation v E.D. Oates Pty Ltd

This matter concerned an opposition by E.D. Oates Pty Ltd to applications lodged by Shop-Vac Corporation seeking the removal of four trade marks from the Register of Trade Marks. Shop-Vac Corporation, based in the USA, applied for the removal of the trade marks FLOORMASTER, registered by E.D. Oates Pty Ltd in respect of goods in classes 21, 9, and 7, from the Register. E.D. Oates Pty Ltd lodged notices of opposition to these removal applications within the prescribed time. Subsequently, Shop-Vac Corporation withdrew its applications for removal.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether E.D. Oates Pty Ltd was entitled to an award of costs following the withdrawal of Shop-Vac Corporation's applications for removal. Shop-Vac Corporation argued that costs should be refused, contending that E.D. Oates Pty Ltd had lodged its notices of opposition unreasonably quickly after receiving a settlement offer, without allowing sufficient time for a response. E.D. Oates Pty Ltd countered that the period was sufficient for a response and that the removal applications would have been unnecessary had Shop-Vac Corporation conducted proper investigations into the use of the mark.

The delegate reasoned that while a notice of opposition can be lodged at any time within the prescribed period, there is no legislative or case law requirement for parties to communicate or to delay lodging an opposition pending settlement negotiations. The delegate noted that the onus is on the applicant for removal to establish a prima facie case of non-use, and lodging an opposition as soon as practicable allows the opponent to review the applicant's evidence at the earliest opportunity. The delegate found no unreasonableness in the timing of E.D. Oates Pty Ltd's opposition.

Given that Shop-Vac Corporation withdrew its applications after the opposition was lodged and before any evidence was filed, and that there was no amendment to the Register, the delegate determined that E.D. Oates Pty Ltd was the successful party. Consequently, the delegate awarded costs to E.D. Oates Pty Ltd and directed that $900.00 be allowed as the costs payable by Shop-Vac Corporation.