Specialist Wholesalers Pty Ltd v Sailun Group Co Ltd

Specialist Wholesalers Pty Ltd opposed an application by Sailun Group Co Ltd to remove its trade mark number 1622700, comprising the words "BLACKHAWK" and a device, from the Register of Trade Marks. The application for removal was made under section 92 of the *Trade Marks Act 1995* (Cth). The matter was heard by Louise Tuohy, a Delegate of the Registrar of Trade Marks.

The court was required to determine whether the trade mark should be removed from the Register on the grounds of non-use, specifically under sections 92(4)(a) and 92(4)(b) of the Act. Given that the trade mark had been registered for more than five years at the time of the application, the Delegate focused on the grounds provided by section 92(4)(b), which relates to a continuous period of three years of non-use.

The Delegate reasoned that section 92(4)(a) and 92(4)(b) provide distinct grounds for removal, and that paragraph (a) effectively merges with paragraph (b) once a trade mark has been registered for five years. The Removal Opponent filed evidence in support of its opposition, while the Removal Applicant filed no evidence. The Delegate found that the trade mark had been used by the Removal Opponent in the relevant period for "tire accessories" but not for "tires." Consequently, the Delegate was satisfied that the opposition to partial removal was established.

Accordingly, the Delegate refused to remove the trade mark registration in its entirety. Instead, an order was made that the specification of goods for trade mark registration 1622700 be amended to exclude "tires," but to retain "tire accessories" and other related goods for land vehicles. The Delegate also directed that removal would not occur until one month from the date of the decision, or until any appeal process was concluded. As both parties had achieved a measure of success, no order for costs was made.