SIPM Pty Limited v Siera Group Pty Ltd

This decision concerns an application by Siera Group Pty Ltd (the Removal Applicant) to remove trade mark number 1529536, "SIERRA PROJECTS," registered in the name of SIPM Pty Limited (the Removal Opponent), from the Australian Register of Trade Marks. The application was made under section 92(4)(b) of the Trade Marks Act 1995 (Cth) on the ground of non-use of the trade mark in relation to services in Class 37. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Removal Opponent had established use of the trade mark "SIERRA PROJECTS" in Australia in relation to the registered services during the continuous three-year period ending one month before the filing of the removal application, which was 10 April 2021. The Removal Opponent bore the onus of proving such use, or demonstrating that circumstances prevented its use, on the balance of probabilities. The delegate also considered whether to exercise discretion under section 101(3) of the Act to allow the trade mark to remain on the Register, even if non-use was established.

The delegate found that the evidence presented by the Removal Opponent was insufficient to establish use of the trade mark during the relevant period. While a tax invoice from July 2020 to March 2021, issued outside the relevant period, contained the words "Sierra Projects" and referred to "PM Services" in relation to construction of residential units, the delegate was not satisfied that this, or other evidence such as website extracts, insurance certificates, or company registration details, demonstrated use of the trade mark as a badge of origin in relation to the registered services within the required period. The assertion that COVID-19 impacted activities was not substantiated with evidence to demonstrate an obstacle to use. Consequently, the delegate was not satisfied that it was reasonable to exercise the discretion under section 101(3) to allow the trade mark to remain on the Register.

Accordingly, the delegate directed that trade mark number 1529536 be removed from the Register one month from the date of the decision, unless a notice of appeal was filed. The Removal Opponent was also ordered to pay the Removal Applicant's costs.