Tunit (BVS Ltd) v Alpine Electronics, Inc

This matter concerned applications by Alpine Electronics, Inc. (the removal applicant) for the cessation of protection for two trade marks held by Tunit (BVS Ltd) (the removal opponent). The dispute arose from allegations of non-use of the trade marks in Australia. The applications were heard by Debrett G. Lyons, a Hearing Officer acting as a delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the grounds for cessation of protection, as stipulated in section 92(4)(b) of the *Trade Marks Act 1995* (Cth), had been established. This section requires proof that a trade mark has remained registered for a continuous period of three years ending one month before the filing of the non-use application, and that during that period, the registered owner neither used the trade mark in Australia nor used it in good faith in Australia. The Hearing Officer was required to determine if the removal applicant had satisfied this burden of proof.

The Hearing Officer found that the ground for cessation of protection had been established in each case. The evidence indicated that the "Tunit" was a hardware device containing a processor, designed for use with diesel engines to improve performance and efficiency, with associated downloadable software. Despite this finding, the Hearing Officer exercised discretion under section 101(1) of the Act. Protection for the trade marks was allowed to remain for specific goods within Class 9, namely magnetic data carriers, data processing equipment, computers, computer hardware, firmware, and software for performance and tuning equipment for diesel engines, as well as electronic engine control equipment and downloadable online publications related to these goods. The removal opponent was ordered to pay the costs of the removal applicant.