Vivo Mobile Communication Co Ltd v ASUSTEK Computer Incorporation

The dispute before the Hearing Officer, Nicholas Smith, concerned an application for the removal of a registered trade mark. The applicant sought the removal of the trade mark on the grounds of non-use in Australia during a specified period. The opponent, the registered proprietor of the trade mark, argued that it had used the trade mark during the relevant period or that there were obstacles to its use.

The Hearing Officer was required to determine whether the opponent had used the trade mark in Australia during the relevant period for any of the goods for which it was registered. If use was established for some goods but not others, the Hearing Officer then had to consider whether to exercise the Registrar's discretion under section 101(3) of the Act to allow the trade mark to remain on the Register for the goods for which it had not been used, taking into account factors such as use on similar goods and the public interest in the integrity of the Register.

The Hearing Officer found that the opponent had established use of the trade mark in Australia for notebook computers during the relevant period, based on evidence of advertising and sales. However, there was no evidence of use for a range of other registered goods, including tablet computers, mobile phones, and computer accessories. While the opponent argued for the exercise of discretion to retain registration for all goods due to the similarity between notebook computers and some of the other goods, the Hearing Officer noted the lack of intention to use the mark on those goods and the significant commercial interest of the applicant in having its own trade mark application assessed against a more narrowly defined registration. The Hearing Officer also considered the close technological relationship between notebook computers and tablet computers.

Ultimately, the Hearing Officer decided to remove the trade mark from the Register in respect of most of the goods for which non-use was established, but exercised discretion to allow the trade mark to remain registered for tablet computers due to their technological similarity to notebook computers. The parties were directed to bear their own costs, as both had achieved a degree of success.