The case of Suzanne Malone v Stance Global Pty Ltd  ATMO 115 (9 December 2014), involved an opposition to a non-use removal action.
The challenged registrations were ultimately removed due to lack of sufficient evidence of use, and lack of reasons to justify exercise of the Registrar’s discretion in the registered owner’s favour.
The case highlights that the opponent to a removal action should carefully prepare its evidence, and put forward reasons to allow the Registrar to exercise discretion to allow the registrations to stand even where the removal grounds have been made out.
Stance Global, the removal applicant, filed an application for the mark COCONUT CULTURE. It consequently filed a removal action against two trade mark registrations of Ms Suzanne Malone in Class 3 and Class 25 respectively, for the mark.
The removal was sought on the basis that there had been no use of the registered marks for the relevant 3-year period.
Ms Malone opposed the removal application. In support of the opposition, she filed evidence of:
- Business name registration for COCONUT CULTURE
- an ATMOSS entry for Application 1196989
- a list of goods supplied to her by a supplier
- copies of labels and business cards bearing the trade mark
- a business insurance statement of currency in Ms Malone’s name
- a photograph of a marquee bearing the Trade Mark and the URL www.coconutculture.com.au
- a photograph of a vehicle bearing the trade mark
- a photograph of bags, purses and sarongs and an item marked ‘coconut’.
Comments on the opponent’s evidence
The Hearings Officer concluded that the evidence filed by Ms Malone was insufficient to show use for relevant goods in relevant period.
The Hearings Officer commented that despite broad statements regarding use, Ms Malone’s evidence did not identify any date any on which the photographs of the goods or the Trade Mark were taken. He also commented that there was no evidence demonstrating that the mark was used on any of the registered goods at any time, let alone during the relevant period.
On the other hand, Stance Global provided evidence suggesting that the www.coconutculture.com.au website was not in use during the relevant period.
On the Registrar’s discretion to allow the registrations to stand
The Hearings Officer confirmed that Section 101 of Trade Marks Act gives the Registrar a broad discretion to decide not to remove a trade mark from the Register, even if the removal ground has been made out, if it is reasonable to do so. However, the registered owner must at least give the Registrar sufficient reason to justify the exercise of discretion in its favour.The Hearings Officer summarised his position in the current case as follows:
‘The Opponent has not satisfied me that any circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in her favour. There is no evidence before me that the Opponent used the Trade Mark to any significant extent at any time (if at all) in relation to the goods for which it is registered.’
Stance Global was therefore successful in relation to its application for removal of Ms Malone’s two registrations.
The case highlights that an Opponent to a non-use removal action must prepare relevant and dated evidence, and should put forward reasons to allow the Registrar to consider exercising discretion in its favour.
Notably, the Ms Malone was not represented in this case. Possibly, she did not have regard to the notion of ‘trade mark use’ when preparing her evidence, noting that business name registrations, insurance documents, business cards, and domain name registrations may not be relevant ‘use’ for the purposes of defending a non-use removal action. If Ms Malone had included dated evidence, or more relevant evidence, or had established use for sufficiently similar goods or services, the outcome of her case may have been very different.
Notably, Stance Global has now secured its own registrations for COCONUT CULTURE under registrations 1565717 and 1594246.