In non-use cancellation proceedings before the Australian Trade Marks Office, the Registrar is provided with the discretion to remove a trade mark “in respect of any or all of the goods and/or services” to which the removal application relates. Provided the Registrar is satisfied it is reasonable to do so, he or she may decide that the trade mark should not be removed from the Register even if the removal grounds have been established.
In the recent decision of Irish Distillers Limited v Joseph Company International Inc.  ATMO (14 April 2015)(Unreported), the Registrar’s discretion was exercised in favour of the trade mark owner despite there not being proof of use of the trade marks in respect of all the goods covered by the trade mark registrations.
Irish Distillers (“the Trade Mark Owner”) is the registered owner of two composite trade marks for goods in Classes 32 and 33, which are used on varieties of their well-known “West Coast Cooler” beverages, as shown below:
Joseph Company (“the Removal Applicant”) filed an application for partial removal of the trade marks for the goods in Class 32. The Trade Mark Owner opposed the removal applications.
Upon reviewing the evidence, the Hearing Officer was satisfied that the Trade Mark Owner had established use of the trade marks in relation to “alcoholic beverages” in Class 33, but not in relation to the goods in Class 32 (namely, “Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks, fruit juices, non-alcoholic cocktails; syrups and other preparations for making beverages”). Nevertheless, the Hearing Officer decided to leave the trade marks on the Register for the “similar goods” in Class 32 on the basis that there would be little to gain from removing the Class 32 goods from the registrations, only to have the Trade Mark Owner succeed in opposing the Removal Applicant’s pending application based on its reputation in the disputed trade marks.
This decision shows that a trade mark owner with a registration for a broad range of goods and services may be able to successfully defend a removal application based on their reputation in the disputed trade mark, even if use cannot be established across the entire range of goods and services. However, this will not always be the case and each situation will be considered on its merits.
While it is not necessary for the owner of a registered trade mark in Australia to demonstrate use of the trade mark to maintain its registration, this decision serves as a reminder to trade mark owners that there is a risk that a third party could seek to remove their trade mark from the Register on the grounds of non-use if the trade mark has not been used for a continuous period of 3 years.