Truline (Australia) Pty Ltd v Malcolm Walter Atwell

This case concerned an application by Truline (Australia) Pty Ltd to remove trade mark registration number 508240 from the Register on the grounds of non-use. Malcolm Walter Atwell opposed this application. The proceedings were governed by the Trade Marks Act 1955. The trade mark in question comprised a specific device and was registered for a broad specification of goods in Class 28, including "All goods in this class including, dart boards, and tables including pool tables, snooker tables and billiard tables, and parts and accessories for all of the aforementioned goods." Truline alleged that the mark was registered without an intention to use it in good faith, that it had not been used in good faith, and that a continuous period of at least three years had elapsed during which the mark had not been used in good faith in relation to the registered goods, specifically from 10 August 1990 to 10 August 1993.

The legal issues before the delegate of the Registrar of Trade Marks were whether Truline was a "person aggrieved" entitled to make the application for removal, and whether Truline had discharged its onus of proving non-use of the trade mark in good faith during the critical period. The delegate also considered whether, if a case for non-use was established, the Registrar should exercise discretion to remove the mark or restrict its specification, particularly in light of arguments concerning the breadth of the specification and the public interest.

The delegate reasoned that Truline had demonstrated it was a "person aggrieved" due to its own trade mark application being cited against the registration and a history of disputes with the opponent. Regarding the onus of proof, the delegate affirmed that under the Trade Marks Act 1955, the applicant for removal bears the burden of proving non-use. While slight evidence may suffice to establish a prima facie case and shift the onus to the registered proprietor, the delegate found Truline's evidence, primarily consisting of an investigator's report and market survey, to be insufficient. The delegate noted significant shortcomings in the investigator's methodology, lack of credentials, and vagueness of findings, distinguishing it from precedents where similar evidence had shifted the onus. The delegate concluded that Truline had failed to establish even a prima facie case of non-use, and therefore, the opponent was not required to present evidence of use.

Consequently, the delegate refused Truline's application to remove the trade mark for any or all of the goods for which it was registered. Both parties sought costs, and the delegate awarded costs to the opponent, finding that the application for removal had not been made out.