United Rentals Inc v United Equipment Pty Ltd

United Rentals Inc (the Applicant) sought the removal of two trade marks, registrations 1837156 and 1837157, from the Register of Trade Marks under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) (the Act) on the grounds of non-use. United Equipment Pty Ltd (the Opponent) was the registered owner of these trade marks. The dispute concerned whether the Opponent had used the trade marks in Australia in good faith during the relevant three-year period preceding the filing of the removal application. The matter was heard by a Hearing Officer, acting as a delegate of the Registrar of Trade Marks, who considered written submissions from both parties.

The primary legal issue before the Hearing Officer was to determine whether the Opponent had established use of the trade marks in Australia in good faith in relation to any of the goods and services for which they were registered, or if there were circumstances that constituted an obstacle to such use during the relevant period. The relevant period for establishing use was the three years ending on 16 May 2022. The Opponent bore the onus of rebutting the allegation of non-use by demonstrating, on the balance of probabilities, that the trade marks had been used in good faith or that there were obstacles to use.

The Hearing Officer applied the principles of section 92(4)(b) of the Act, which requires proof of use in Australia in good faith during the specified period. The Hearing Officer noted that the standard of proof required for the Registrar to be satisfied of a matter is persuasion according to the balance of probabilities. After considering the evidence and submissions, the Hearing Officer was unpersuaded that the Opponent had provided sufficient justification to retain the trade marks on the Register for all the remaining goods and services. The Hearing Officer concluded that the ground for removal under section 92(4)(b) had been established for most of the registered goods and services.

Consequently, the Hearing Officer directed that registrations 1837156 and 1837157 be partially removed from the Register for all goods and services except for 'retailing of new and used rental shipping containers' in Class 35. The registrations were ordered to remain covering only this specific service in Class 35. In light of neither party being entirely successful, no order for costs was made.