Eddie Bauer Inc v Canstar Sports Group Inc

In the Federal Court of Australia, Justice Terry Williams considered a dispute between Eddie Bauer Inc (the applicant) and Canstar Sports Group Inc (the respondent). The applicant sought to expunge from the Register of Trade Marks a trade mark registered by the respondent, alleging that the respondent had not genuinely used the mark in Australia.

The central legal issue before the Court was whether the respondent had made genuine use of its registered trade mark in Australia in relation to the goods for which it was registered. This required the Court to consider the meaning of "genuine use" in the context of the *Trade Marks Act 1995* (Cth) and to assess the evidence presented by the respondent to demonstrate such use.

Justice Williams reasoned that "genuine use" requires more than token or sham use; it must be a real and substantial use of the trade mark in the course of trade. The Court examined the respondent's evidence, which included sales figures, marketing materials, and evidence of distribution arrangements. His Honour found that while there had been some sales and marketing activities, these did not demonstrate a level of use that could be considered "genuine" in the Australian market, particularly given the limited duration and scale of the activities. The Court applied the principle that the onus is on the registered proprietor to prove genuine use when challenged.

Consequently, Justice Williams ordered that the respondent's trade mark be expunged from the Register of Trade Marks.