SurfStitch Pty Ltd v One Day Bridal Pty Ltd

SurfStitch Pty Ltd opposed an application by One Day Bridal Pty Ltd to remove the trade mark "CHOSEN LABELS" from the register under section 92 of the *Trade Marks Act 1995* (Cth). The application for removal was based on allegations of non-use. The matter was determined by Nicholas Barbey, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the applicant, One Day Bridal Pty Ltd, had established grounds for the removal of the "CHOSEN LABELS" trade mark from the register due to non-use. Specifically, the delegate considered the application under section 92(4)(b) of the Act, which requires the trade mark owner to demonstrate use of the mark in good faith in Australia during the three-year period ending 24 May 2019. The burden of proof lay with SurfStitch Pty Ltd to rebut the non-use allegation.

The delegate applied the ordinary civil standard of proof, based on the balance of probabilities. SurfStitch Pty Ltd, as the opponent, filed evidence in the form of a declaration from its Managing Director, Justin Hillberg. This declaration detailed significant and genuine commercial steps taken by SurfStitch Pty Ltd to launch products under the "CHOSEN LABELS" trade mark during the relevant period. These steps included budget and resource planning, formulating a product launch timeline, and the creation of a dedicated website for the trade mark, including the registration of a domain name in September 2018. The delegate noted that the Registrar has a discretion under section 101 of the Act to decline removal even if grounds for non-use are established.