The Mentholatum Company v Innoxa Marks Limited

This matter concerned an application by Innoxa Marks Limited for the removal of trade mark 736454 from the Register, which was registered in the name of The Mentholatum Company. The application was heard by Debrett Lyons, a delegate of the Registrar of Trade Marks, in Melbourne on 19 June 2008. Innoxa relied on written submissions, while Mentholatum was represented by counsel.

The primary legal issue before the delegate was whether trade mark 736454 should be removed from the Register on the grounds of non-use, as provided by section 92 of the *Trade Marks Act 1995* (Cth). Specifically, the delegate had to consider the allegations that the applicant for registration had no intention in good faith to use the trade mark in Australia, and that the registered owner had not used the trade mark in Australia in good faith. The delegate also considered the impact of an assignment of the trade mark that occurred during the proceedings.

The delegate's reasoning focused on the evidence presented by both parties regarding the use of the trade mark. While the assignment of the trade mark to Mentholatum was noted, the delegate's decision ultimately turned on the application of section 92(4)(a) of the Act. The delegate found that one limb of Innoxa's allegations under section 92(4)(a) had been successfully established, although not in relation to the entire scope of goods for which the trade mark was registered.

Consequently, the delegate ordered that trade mark 736454 be removed from the Register in respect of the goods "sun block and sun screen preparations". This removal was to take effect one month after the date of the decision, subject to any appeal. In light of the partial success of the opposition, the delegate directed that each party bear their own costs.