Caterpillar applied for removal of Supacat’s registration no. 1098554 SUPACAT in Class 12 on the grounds of non-use. Registration 1098554 covered “wheeled military vehicles; off road vehicles; vehicles for use in transporting and launching boats” in Class 12. The intended customers of the SUPACAT goods were the Australian Defence Forces (ADF).
Supacat’s evidence in support included copies of advertisements which ran in the Australian Defence Magazine (“ADM”) on 3 occasions during the relevant period. The advertisements feature the SUPACAT trade mark in relation to registered Class 12 goods. Other evidence included invoices from outside the relevant period, and tender documents dated within the relevant period.
The removal applicant argued advertisements in the ADF magazine did not constitute use of the trade mark in relation to the goods. The basis of this argument was that, because the ADF selects products according to its technical requirements and not by reference to trade marks, advertising (and therefore the trade mark being advertised) plays no part in the ADF procurement system.
The Hearing Officer found that the opponent had used the SUPACAT mark in Australia during the relevant period in the advertisements and tender documents. The opponent used the trade mark in these documents for the purpose of distinguishing its goods from those of other traders. It is therefore not relevant that the goods may have been selected by consumers other than by reference to the SUPACAT trade mark within the advertisements or tender documents during the relevant period.
Removal action was unsuccessful.
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