A recent decision in a non-use removal action highlights the importance for registered owners to file supporting evidence when opposing this kind of action.
Australian Char Pty Ltd owned a registration for the MATCHLITE trade mark in class 4. The Kingsford Products Company, LLC filed an application to remove the registration on the basis of non-use of the trade mark in Australia during the period 17 April 2013 and 17 April 2016.
Australian Char opposed the removal action on the basis that it had taken preparatory steps during the relevant non-use period to relaunch the goods offered under the MATCHLITE trade mark. Although use of the mark had been suspended in 2006, Australian Char had taken steps towards the recommencement of sale of goods under the MATCHLITE trade mark during the period November 2013 and March 2016 including:
- Working with two suppliers to develop a range of goods for manufacturers overseas
- Visits to China and Hong Kong to discuss the product
- Testing the product in laboratories for suitability for the Australian market
- Reviewing quotes and market prices.
In addition Australian Char requested that the Register exercise its discretion in retaining the mark on the register on the basis that it had a residual reputation in Australia as a result of extensive use between 1988 and 2006.
However, Australian Char did not file any documentary evidence to support the actions to relaunch the goods or to show a residual reputation in the MATCHLITE trade mark in Australia. Although the Opponent’s evidence included pictures of a product bearing the MATCHLITE trade mark were submitted by the Opponent as well as sales figures, these were dated after the relevant non-use period and the number of items sold was in the single digits. The Hearing Officer was unable to give any weight to the unsupported assertions of use or preparatory use during the relevant non-use period. Furthermore the evidence filed by the Opponent did not support a finding that the mark had a residual reputation in the Australian market.
The Hearing Officer directed that the registration be removed from the Register.
To view the Office decision, click here.