Zero Motorcycles Inc v Benzina Zero Pty Ltd

Zero Motorcycles Inc. (‘Opponent’) opposed applications by Benzina Zero Pty Ltd (‘Applicant’) seeking the cessation of protection for two international trade marks registered in Australia, namely "Zero Motorcycles" and "ZERO S", both in class 12 for electric vehicles. The Applicant’s applications were made under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth), alleging non-use of the trade marks in Australia for a continuous period of three years ending one month before the filing of the applications, pursuant to section 92(4)(b) of the Trade Marks Act 1995 (Cth). The Opponent bore the onus of rebutting this allegation by establishing, on the balance of probabilities, that it had used the trade marks in Australia in relation to the registered goods during the relevant three-year period.

The delegate of the Registrar of Trade Marks was required to determine whether the Opponent had established use of the trade marks "Zero Motorcycles" and "ZERO S" in Australia during the period from 25 July 2017 to 25 July 2020. The Opponent relied on evidence of use via its website, invoices, media coverage, and third-party articles. The Applicant contended that this evidence was insufficient, particularly noting the removal of Australia from the Opponent's website's country selection menu by October 2017 and referencing articles suggesting the cessation of consumer sales in Australia.

The delegate found that the Opponent had successfully rebutted the allegation of non-use. The primary evidence relied upon was the Opponent's website, which, through an Australian-specific web page, demonstrated an offer for sale of the registered goods to Australian consumers during the relevant period. This use of the trade marks on the website was deemed sufficient to constitute genuine use for the purpose of rebutting the non-use allegation, even in the absence of actual sales. While criticisms of other evidence, such as invoices and publicity articles, were noted, the delegate concluded that the website evidence alone was sufficient to satisfy the Opponent's onus.

Consequently, the delegate ordered that the trade marks "Zero Motorcycles" and "ZERO S" were to remain protected on the Register for all registered goods. The Applicant was also ordered to pay the Opponent's costs, with reduced costs awarded in respect of one of the registrations.