The Grape Organisation Pty Ltd v A.C.N 123732516 Pty Limited (ACN 123732516)

The dispute before the delegate of the Registrar of Trade Marks, Nicholas Smith, concerned an application by The Grape Organisation Pty Ltd (the Applicant) to remove four trade mark registrations owned by A.C.N 123732516 Pty Limited (the Opponent) from the Register. The grounds for removal were based on allegations that the Opponent had no intention to use the trade marks, or had not used them, in relation to the goods and services for which they were registered. The Applicant contended that the bands associated with the trade marks were defunct, that the Opponent was only selling old music, and that the Opponent had a history of registering defunct band names to deceive the public.

The primary legal issue before the delegate was whether the Opponent had demonstrated an intention to use, or actual use of, the trade marks for which they were registered, thereby satisfying the requirements of section 92(4)(a) of the relevant legislation. This involved considering the onus of proof in such proceedings and the nature of the evidence required to establish an intention to use a trade mark, particularly in circumstances where the registered owner is alleged to be dealing with defunct musical acts.

The delegate applied the principle that the onus is on the applicant for removal to prove the absence of intention to use, and that this onus is not particularly arduous. Citing precedent, the delegate noted that the making of an application for registration is prima facie evidence of an intention to use, and that "intention" does not necessarily mean an intention to use immediately or within a limited time. The delegate was satisfied that, at the relevant dates, the Opponent intended to use each of the trade marks and had indeed actively used them for many of the registered goods and services. Consequently, the Opponent successfully established its opposition to the removal application.

The Opponent was successful in its oppositions to the removal of the trade marks and was awarded costs. The delegate ordered that the Applicant pay the Opponent's costs in relation to trade mark number 1938040. Costs in relation to trade mark numbers 1960308, 1984553, and 1961113 were to be taxed in a specified manner, with costs awarded against the Opponent in these instances.