Werner International POC GmbH v Oldfields Pty Ltd

Werner International POC GmbH (the Removal Opponent) opposed an application by Oldfields Pty Ltd (the Removal Applicant) to remove trade mark number 902103, registered in classes 6 and 20 for "oldfields LADDERS (figurative)", from the Register of Trade Marks. The Removal Applicant sought removal on the grounds of non-use during the period of 10 February 2017 to 10 February 2020.

The primary legal issue before the Hearing Officer was whether the Removal Opponent had made sufficient use of the trade mark during the relevant three-year period to justify its continued registration. This involved assessing the evidence presented by both parties regarding the sale and distribution of goods under the trade mark.

The Hearing Officer found that the Removal Opponent had rebutted the allegation of non-use. The evidence indicated that the Removal Opponent had engaged in negotiations with the Removal Applicant to become an exclusive distributor of the trade mark. During this period, it was considered not practicable for the Removal Opponent to explore other sales channels. Once negotiations paused, the Removal Opponent actively pursued alternative distribution, including preparing a presentation for Total Tools and entering into an agreement with Get Tools Direct, making the registered goods available for sale. The Removal Opponent also sold goods through its own website.

Consequently, the Hearing Officer was satisfied that it was appropriate to exercise discretion to allow the trade mark to remain on the Register and directed that trade mark registration number 902103 remain registered. The Removal Opponent was awarded costs against the Removal Applicant.