Arlec filed an application for the removal, for non-use, of the Schneider trade mark registration for the shape of an electrical switch (shown below). Schneider opposed the removal of its registration.
Both parties agreed that the issue was whether the trade mark had been used ‘as a trade mark’, rather than whether the trade mark should have ever been accepted for registration.
Schneider led evidence of its use of the trade mark during the relevant period including examples of packaging used, which contained the trade mark ‘CLIPSAL’ (a subsidiary of Schneider)
For its part, Arlec led evidence of various design registrations held by differing entities that are similar in appearance to the trade mark. It was noted by the Hearing Officer that this was of little relevance to the matter at hand.
Arlec also led evidence of electricians that were unable to identify the trade mark from a ‘line-up’ of electrical switches. Again, the Hearing Officer noted that this was of little relevance to the issue of ‘use’ by Schneider.
Ultimately, the Hearing Officer found that there had been genuine commercial sales of the goods which are the subject of the trade mark by Schneider in Australia during the relevant period. Accordingly, the registration is to be retained on the Register.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Litigation Team, Trade Marks Team
Trade Marks Team