Thebe International Pty Ltd v CDB Media Limited

Thebe International Pty Ltd (the Opponent) opposed the removal of its GOLDAIR trade mark registrations from the Register. The Applicant sought removal on the grounds of non-use, alleging that the trade mark had remained registered for a continuous period of three years ending one month before the application was filed, and during that period, the registered owner had not used the trade mark in Australia in good faith in relation to the relevant goods or services. The matter was heard by the delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the Opponent had used the GOLDAIR trade mark in Australia in good faith during the relevant three-year period for the goods and services for which the registrations were held, and if not, whether there were grounds to exercise discretion to allow the trade marks to remain on the Register. Specifically, the delegate had to determine if the evidence of use was sufficient to rebut the allegations of non-use for various goods across different classes, including electrical apparatus, electro-mechanical apparatus, and electric blankets.

The delegate found that the Opponent had demonstrated use of the GOLDAIR trade mark in relation to electric blankets, thereby rebutting the allegation of non-use for that specific good. However, for the remainder of the goods listed in the specifications, the delegate found a lack of conclusive and dated evidence of use. The delegate reasoned that while components might be related to a product for which use was proven, such as electric blankets, the use of the trade mark on the component itself did not necessarily constitute use in relation to the individual component as a distinct good, particularly when the component was not sold separately. Consequently, the delegate directed that trade mark registration no. 281418 would remain on the Register only for electric blankets, and would be removed for all other specified goods. The applications for removal in relation to trade mark registrations nos. 242019, 434005, 493146, and 493421 were successful, and these registrations were directed to be removed from the Register. Costs were awarded in favour of the Applicant for the successful removal applications, with the exception of the partially rebutted application concerning trade mark registration no. 281418.