Tip Top Ice Cream Company Limited v Peters Foods Australia Limited and Petersville Limited

Tip Top Ice Cream Company Limited (Tip Top) applied to the Registrar of Trade Marks for the removal of two trade marks, "trumpet" and "golden trumpet," registered by Peters Foods Australia Pty Limited and Petersville Limited (Peters) in respect of ice cream and frozen confections. Tip Top contended that the marks were registered without a good faith intention for their use and that there had been no good faith use of the marks by Peters for a continuous period of at least three years prior to Tip Top's application. Tip Top also claimed to be aggrieved by the registrations, asserting its own proprietorship of the "TRUMPET" mark and a desire to use it in Australia.

The primary legal issues before the delegate were whether Tip Top had standing as a "person aggrieved" to seek removal of the trade marks, and if so, whether Tip Top had established a prima facie case of non-use of the registered marks by Peters for the requisite periods under sections 23(1)(a) and 23(1)(b) of the *Trade Marks Act 1955*. If a prima facie case of non-use was established, the delegate also considered whether to exercise discretion to allow the marks to remain on the register, despite the non-use, based on public interest considerations, unimpeached title, and continued good faith use.

The delegate found that Tip Top had standing as a person aggrieved, as its intention to use its own "TRUMPET" mark in Australia would be appreciably disadvantaged by the continued registration of Peters' marks. Regarding the non-use, the delegate accepted the evidence presented by Tip Top, including declarations from former employees of Peters and market observers, which indicated no use of the "trumpet" and "golden trumpet" marks by Peters between December 1989 and December 1992. Peters' evidence, including a general statement of use by a company manager and survey results, was found to be insufficient to counter this prima facie case of non-use, particularly as the surveys did not establish use within the critical period.

Consequently, the delegate concluded that Tip Top had successfully established its case under section 23(1)(b) of the *Trade Marks Act 1955*. The delegate also considered Peters' submission that discretion should be exercised to retain the marks, but found that the evidence of residual renown was insufficient to demonstrate a significant risk of public deception or confusion, and that there had not been continuous use in good faith. Therefore, the delegate ordered the removal of the trade marks "trumpet" and "golden trumpet" from the Register.