Team Brands Pty Ltd v Rotenburg Pty Ltd as Trustee for the DMG Trust and Modrej Pty Ltd as Trustee for the ATTT Trust and Provolone Pty Ltd as Trustee for the DJWC Trust

Team Brands Pty Ltd (the Applicant) sought the removal of certain trade marks from the Register of Trade Marks on the grounds of non-use, against Rotenburg Pty Ltd as Trustee for the DMG Trust, Modrej Pty Ltd as Trustee for the ATTT Trust, and Provolone Pty Ltd as Trustee for the DJWC Trust (the Opponents). The matter was decided by Nicholas Smith, a delegate of the Registrar, based on written submissions and evidence.

The primary legal issue before the court was whether the Opponents had established that the trade marks in question had been used in Australia in good faith during the three-year period ending one month before the filing of the non-use application, which was 7 May 2021. This involved determining whether the onus, which lay with the Opponents to rebut the allegation of non-use, had been discharged.

The court considered the provisions of Part 9 of the Act, specifically section 92(4)(b), which outlines the grounds for removal due to non-use, and section 100, which places the burden on the opponent to establish use. The Opponents were required to demonstrate that the trade mark, or a substantially similar version, was used in good faith by the registered owner or an assignee during the relevant period, or that non-use was due to circumstances constituting an obstacle to its use. The court reviewed declarations and annexures provided by both parties to assess the evidence of use.

The court found that the Opponents had not discharged the onus of proving use of the trade marks in Australia in good faith during the relevant period. Consequently, the court ordered the removal of the trade marks from the Register.