Unilever Australia Limited v Arrow Export Services Pty Limited

This decision concerns an opposition by Arrow Export Services Pty Limited to applications by Unilever Australia Limited to remove two trade marks, UNIFOOD (registration numbers 343795 and 343796), from the Register. The trade marks were registered for "all goods included in this class" in classes 29 and 30 respectively. Unilever sought removal on the grounds of non-use, specifically alleging that the marks were registered without a good faith intention to use them and that there had been no good faith use for a continuous period of at least three years prior to the applications for removal. The opposition was heard by a delegate of the Registrar of Trade Marks, applying the provisions of the Trade Marks Act 1955.

The primary legal issues before the delegate were whether Unilever Australia Limited had established a prima facie case that the trade marks had not been used in good faith during the relevant three-year period, and if so, whether Arrow Export Services Pty Limited had provided sufficient reasons to exercise discretion and allow the marks to remain on the Register. A threshold issue was also whether Unilever was a "person aggrieved" with standing to bring the removal applications.

The delegate reasoned that Unilever had established a prima facie case of non-use, supported by evidence from seven declarants in the grocery industry who had not encountered the UNIFOOD mark used by any entity other than Unilever's "Unifoods" division during the critical period. While the delegate acknowledged that the use of "Unifoods" as a business name by Unilever's division, closely associated with trading relevant goods, conferred standing as a "person aggrieved," the evidence indicated that this was not use of the mark as a trade mark. The delegate found that Arrow Export Services had only demonstrated use of the UNIFOOD mark in relation to honey during the relevant period, and that other claimed uses or preparations for use did not constitute genuine trade mark use. Furthermore, the delegate determined that the goods in classes 29 and 30 were not of the same description for the purposes of discretionary relief under section 23(2) of the Act, and that the opponent had not provided persuasive evidence of residual reputation or other grounds to justify retaining the registrations for goods other than honey.

Consequently, the delegate directed that the statement of goods for registration number 343795 be amended to "honey," and ordered that trade mark number 343796 be removed from the Register. Unilever Australia Limited was awarded 75% of its costs.