Sunsmart Products (Pty) Ltd v Kimen International Pty Ltd

This matter concerned an application by Sunsmart Products (Pty) Ltd to remove the trade mark EXPAND A SIGN from the register, which was opposed by Kimen International Pty Ltd. The dispute arose from an allegation of non-use of the trade mark by Kimen during the relevant three-year period preceding the application for removal. The hearing officer, Debrett Lyons, considered the evidence and submissions from both parties.

The primary legal issue before the hearing officer was whether Kimen, the registered owner of the trade mark, had made sufficient use of the trade mark in Australia in relation to the registered goods during the period of 13 September 2002 to 13 September 2005. Sunsmart contended that even if Kimen had used the trade mark, such use should be attributed to Sunsmart, thereby meaning there had been no use by Kimen as the registered owner, and consequently, the trade mark should be removed from the register. This involved an interpretation of sections 100, 92(4)(b), 7(3), and 8(1) and (2) of the relevant Act, concerning the onus on the trade mark owner to prove use and the definition of authorised use.

The hearing officer reasoned that section 100 places the onus on the trade mark owner to rebut an allegation of non-use. While Kimen presented evidence of use of the trade mark on advertising signs during the relevant period, Sunsmart argued that this use did not inure to Kimen's benefit as the registered owner. Sunsmart relied on provisions defining authorised use, suggesting that Kimen's use was not under the requisite control of Sunsmart. However, the hearing officer found that there was unambiguous use of the trade mark in Australia by its registered proprietor, Kimen. The evidence did not establish a fiduciary relationship between the parties, nor was there a clear agreement regulating the use or ownership of the trade mark. Kimen was found to be a reseller of Sunsmart's goods, and Sunsmart's intellectual property rights related to patents and designs, not the trade mark in question. The hearing officer concluded that the use of the trade mark by Kimen did not inure to the benefit of Sunsmart, nor was the use in bad faith.

Consequently, the hearing officer ordered that the trade mark EXPAND A SIGN (trade mark 817129) was to remain on the register. The applicant for removal, Sunsmart, was ordered to pay Kimen's costs according to the official scale.