An agreement was made to settle the action alleging non-use of intellectual property
The Federal Court has found it appropriate to issue orders reversing a decision of the delegate of the Registrar of Trade Marks without hearing the merits of the appeal and cross-appeal of the parties after they had settled their dispute.
In Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited, [2025] FCA 428, the appellant registered a trademark in classes 9, 35, and 41.
Before the registrar, the respondent brought actions against the appellant’s registrations to allege non-use from 6 August 2016 to 6 August 2019 under s. 92(4)(b) of the Trade Marks Act 1995 (Cth) after the appellant’s marks had been cited against the respondent’s trademark application.
The registrar’s delegate found that the appellant did not use its trademark in connection with the class 9 goods or the class 35 and 41 services within the non-use period. After refusing to exercise the discretion provided by s. 101(3) of the Trade Marks Act, the delegate removed class 9 and partially removed classes 35 and 41 of the appellant's registrations.
The appellant appealed the portions of the decision removing goods and/or services, while the respondent cross-appealed the parts retaining goods and/or services.
Later, the parties told the court they had settled the matter. They asked the court to make orders allowing the appellant’s appeal and dismissing the respondent’s cross-appeal. The appellant alleged that the court could issue such orders by the parties’ consent without hearing the case on its merits.
The Federal Court agreed to issue the orders by consent. Specifically, the court:
The court said it had to be satisfied that these orders would not undermine the integrity of the register of trademarks. The court noted that the Trade Marks Act’s provisions governing the removal of unused trademarks from the register seek to protect the register’s integrity and consumer interests.
In this case, the court deemed it appropriate to issue the orders requested by the parties for four reasons. First, the court found that the respondent, which had succeeded in its actions before the delegate, agreed to orders setting aside the delegate’s substantive orders.
Second, the court found that the registrar neither opposed the orders requested nor saw any obstacle to granting such orders.
Third, the court noted that the delegate determined that the appellant had not used the trademark for some of the goods and/or services within the non-use period and that the delegate would not exercise the statutory discretion to retain the registration for these goods and/or services. The court said these determinations did not bar an order allowing the appeal.
Fourth, the court said the respondent accepted that the evidence that the appellant planned to provide in the appeal would differ from the evidence the appellant presented before the delegate.
Lastly, the court noted that the parties did not argue that the statutory discretion to retain the registration of the appellant’s trademark was inapplicable in this case.
