TAP Worldwide filed an application for removal on the grounds of section 92 alleging that the mark had not been used in good faith in a three year period. The mark at issue was is above and was registered by Chiotelis in 2004 for vehicles in Class 12.
TAP Worldwide is the owner of the Smittybilt brand, a US automobile parts manufacturer that has operated since 1963 and its products have been available in Australia for some time (based on the evidence led).
Chiotelis (a carpenter by trade) asserted that while he had not personally used the mark, a series of licenses had been granted to others in respect of the mark throughout the relevant period. However, the trade mark had not been used by the licensees either.
Despite no actual use of the trade mark having occurred, the issue of the Registrar’s discretion was pressed. On this the Registrar, weighing the non-use by the owner and licensees against the evidence brought by the removal applicant of their connection with the SMITTYBILT mark in the US and some importation into Australia in the relevant period, the Registrar was not satisfied that any of the circumstances justified utilising the Registrar’s discretion, nor was there any public interest in the preservation of the mark on the register.
The Registrar directed that the trade mark be removed from the register.
To view the Office decision, click here.