TGL Consulting Pty Ltd v Fisher Controls International

This matter concerned an application by TGL Consulting Pty Ltd (the applicant) to remove the trade mark SURESERVICE from the Register of Trade Marks, which was opposed by Fisher Controls International (the opponent). The application was heard by Ian Thompson, Hearings Officer, as a delegate of the Registrar of Trade Marks.

The legal issues before the Hearings Officer were whether the opponent had used its trade mark SURESERVICE in Australia in relation to information technology consultancy services, and whether such use constituted use in trade. The applicant contended that the precise nature of the opponent's consulting service was unclear and that the uses of the trade mark on the opponent's website did not amount to a service in relation to information technology services.

The Hearings Officer determined that the opponent's evidence established that it provided a comprehensive service for clients' information technology needs, documented by a checklist bearing the trade mark SURESERVICE. The Hearings Officer found that public uses of the trade mark by the opponent constituted use in trade in relation to the registered services. Consequently, the opponent successfully opposed the removal of the trade mark. The opponent was awarded its costs.