Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited

This matter concerned an application for the removal of trade mark registrations from the Register due to non-use, brought by VUR Village Trading No 1 Limited (the Applicant) against Village Roadshow IP Pty Ltd (the Opponent). The dispute involved three trade mark registrations: 596853, 596854, and 596855. The Applicant sought removal on the grounds of non-use under section 92(4)(b) of the *Trade Marks Act 1995* (Cth), alleging that the Opponent had not used the trade marks in Australia for a continuous period of three years ending one month before the application for removal was filed. The proceedings were heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had discharged its onus, as stipulated by section 100 of the Act, to rebut the allegation of non-use for the relevant three-year period. This required the Opponent to demonstrate that the trade marks had been used in good faith in Australia in relation to the registered goods and services, or that there were circumstances constituting an obstacle to their use. The delegate also considered whether the Registrar's discretion to impose conditions or limitations under section 102 of the Act was appropriate, or if removal was the necessary outcome.

The delegate found that the Opponent had failed to establish use of trade mark registration 596853 for any of the goods and services for which it was registered. Consequently, this registration was directed to be removed from the Register. However, for trade mark registrations 596854 and 596855, the Opponent successfully demonstrated use for a subset of the registered services. In these instances, the delegate determined that removal of the registrations for all remaining goods and services was appropriate, while the registrations would remain in force for the specific services for which use had been proven. The delegate declined to make speculative inferences about the Applicant's commercial interests and noted that the Applicant's decision not to file evidence meant it could not rely on such evidence. Given the partial success for both parties, no order as to costs was made.