Terranora Group Management Pty Ltd v Rise Projects Pty Ltd

The matter before the Delegate of the Registrar of Trade Marks, Nicholas Smith, concerned applications for the removal of two registered trade marks, numbers 1176231 and 1176245, from the Register. The applications were brought by Rise Projects Pty Ltd (the Applicant), and the opposition to removal was lodged by Terranora Group Management Pty Ltd (the Opponent). The dispute centred on whether the Opponent had used its trade marks during the relevant period and whether there were any obstacles to such use.

The primary legal issues before the Delegate were whether the Opponent had established its opposition to the removal of the trade marks, specifically by demonstrating use of the trade marks during the relevant period or by showing an obstacle to their use, and consequently, whether the Registrar should exercise discretion not to remove the trade marks from the Register.

The Delegate found that the Opponent had failed to provide evidence demonstrating use of the trade marks during the relevant period or any impediment to their use. As the Opponent made no submissions regarding the exercise of discretion not to remove the trade marks, the Delegate concluded that it was not appropriate to exercise such discretion. Consequently, the Delegate directed that trade mark numbers 1176231 and 1176245 be removed from the Register. The Applicant was successful in its applications for removal and was awarded costs in respect of both trade marks.