Universal Health International Pty Ltd v Universal Protein Supplements Corporation

This matter came before Hearing Officer Michael Kirov concerning a dispute between Universal Health International Pty Ltd (the Applicant) and Universal Protein Supplements Corporation (the Opponent). The Opponent sought to remove the Applicant's trade mark registration for the mark "UNIVERSAL" in relation to sports nutrition supplements. The Opponent contended that it had used a similar mark, also "UNIVERSAL", in connection with homeopathic medicines, herbal medicines, and health care products since 2003, and that the Applicant's registration should be removed on grounds of non-use or that it was registered contrary to the Opponent's prior rights.

The primary legal issues before the Hearing Officer were whether the Applicant had genuinely used its registered trade mark in Australia, and if so, whether the Opponent possessed prior rights to the "UNIVERSAL" mark that would justify the removal of the Applicant's registration. This involved assessing the extent and nature of the use of both parties' marks in the Australian market, and considering the potential for confusion or deception among consumers given the similarity of the marks and the nature of the goods.

The Hearing Officer considered evidence from both parties, including statutory declarations and exhibits detailing their respective business operations and trade mark usage. The Opponent established that it was incorporated in 2003 and specialised in chiropractic and natural medicines, using its "UNIVERSAL" mark on products distributed through its health centres and to a database of over 34,000 patients. The Applicant, a manufacturer of sports nutrition supplements since 1977, demonstrated significant worldwide sales and advertising expenditure, with its products being imported into Australia since at least 2004 and distributed through various retail channels. The Hearing Officer noted the Applicant's long-standing use of the "UNIVERSAL" trade mark since 1977 and its substantial presence in the Australian market through its principal distributor, EMI Nutrition Distributors, since 2003.

The Hearing Officer found that the Applicant had established genuine use of the "UNIVERSAL" trade mark in Australia in relation to its sports nutrition supplements. The evidence indicated a consistent and substantial commercial presence in the Australian market, with products being sold through diverse outlets. Consequently, the Opponent's application for removal of the trade mark registration was dismissed.