Sorbent branded toilet paper, tissues and related products have been extensively advertised in Australia through TV commercials and magazines over a number of years. The strength of its brand, its products and advertisements are well recognised. For example, most consumers would be familiar with the “Australians love Sorbent” TV commercials. However, the Australian Trade Marks Office recently heard an application for the removal of the SORBENT mark on the grounds of non-use under s 92(4)(b) of the Trade Marks Act by its owner, SCA Australasia. Given the strength of the brand and its apparent use in Australia, the removal application is surprising.
The application was filed because use of the trade mark had always been through AB SCA Finans, a related company.
The applicant firstly contended that this was not authorised use within the meaning contemplated by the Act because there must be control of the user in the manner described by s 8 of the Act. The Hearing Officer found that the “everyday notoriety” of the mark was sufficient to assure him “that intra group ownership, use and control of the trade mark would be regulated in a way satisfying s 8”, considering both the definition of “related company” in the Corporations Act 2001 and that the examples of control described in s 8(3) and (4) of the Act are non-exhaustive.
It was also asserted that if there had been authorised use, the use was only in relation to tissues and wet wipes but not for articles of cardboard or dispensers for wet wipes. While the evidence could have been better assembled for those two classes, the Hearing Officer found that this is exactly the type of case that justifies the use of the s 101(3) discretion to allow those marks to stand. He noted that Flick J’s comments in E & J Gallo tell us that there is no need for special facts or circumstances to exercise it. He believes that removing these goods from the application would be too restrictive since they and the allowed goods are goods of the same kind.
Despite the favourable outcome to SCA Australasia, this application presents a note of caution to trade mark owners that the relative strength of a brand alone is not sufficient to protect a mark against challenge.