Geoffrey Allan Lewis v Point Break Surfing Company Pty Ltd

[2000] ATMO 85

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Geoffrey Alan Lewis to the application to remove trade mark registration number 590991(25) - POINT BREAK- under section 92 of the 1995 Act by Point break Surfing Company Pty Ltd.

Background

In this matter Point Break Surfing Company Pty Ltd ('Point Break') applied on 19 February 1999 for removal of registration 590991 from the Register on the grounds of non-use under the provisions of section 92 of the Trade Marks Act 1995 ('the Act').

Trade mark registration 590991 is owned by Geoffrey Allan Lewis ('Lewis') who is the opponent in these proceedings.  The trade mark, POINT BREAK is registered in Class 25 for the goods "Surfing clothing including T-shirts and boardshorts".

After Lewis filed evidence in support of opposition to the removal application on 31 August 1999, Point Break made, and received, two applications for extension of time to serve evidence in answer.  However, no such evidence was lodged and neither party requested to be heard.  Consequently, this issue has come to me to decide on the written record.

Reasons

Section 92 of the Act provides:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(2) The application:

(a) must be in accordance with the regulations; and

(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:  For prescribed court see section 190.

(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv) has not used the trade mark in Australia; or

(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i) used the trade mark in Australia; or

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note:  For file see section 6.

(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

The application for removal was made under the grounds of both subsections 92(4)(a) and (b).  The relevant period for the purposes of subsection 92(4)(b) is between 19 January 1996 and 19 January 1999 ('the relevant period').

The evidence comprises a statutory declaration by Geoffrey Alan Lewis.  The declarant attests to the use of the trade mark in the relevant period - the goods being sold through markets and such goods including t-shirts, caps and board shorts.  Appended to the declaration are labels, sample goods, invoices from suppliers and so forth that are from within the relevant period.

The application for removal therefore fails under each of the grounds it was made.

Decision

I dismiss the application on each of the grounds it was made.

Costs

Mr Lewis requests, and is entitled to, his costs in this matter and I award costs against Point Break.

Ian Thompson
Hearing Officer

7 August 2000