Helen Gould v Hasbro Inc - [2024] ATMO 84

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Helen Gould to an application under section 92 of the Trade Marks Act 1995 (Cth) by Hasbro Inc for removal of trade mark number 1277381 (28) – Doh-Magic – in the name of Helen Gould

Delegate: Nicholas Smith

Representation: Opponent: Self-represented
Applicant: Baker McKenzie

Decision: 2024 ATMO 84
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register
Background

This decision is pursuant to an application made on 29 April 2022 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Hasbro Inc (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No. 1277381

Lodgement date 18 Dec 2008

Goods Class 28: Children's toys
(‘Registered Goods’)

Owner Helen Gould

Trade Mark Doh-Magic
(‘Trade Mark’)

Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Helen Gould (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 23 June 2022 and a Statement of Grounds and Particulars (‘SGP’) on 21 July 2022. The Applicant filed a Notice of Intention to Defend on 19 August 2022.
The following evidence was filed in this matter:

Declarant and Position

Date

Annexures or Exhibits

Evidence in support

Helen Gould, Opponent (‘Gould declaration’)

20 Nov 2022

Various unmarked documents

Evidence in answer

N/A

Evidence in reply

N/A

Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 10 February 2023 the Applicant requested a hearing by submissions and paid the appropriate fee. The matter was set down for a hearing on 1 February 2024. In line with usual practice, a letter was sent to the parties on 27 November 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Applicant filed written submissions on 25 January 2024 (‘Applicant’s Submissions’). The Opponent did not file any submissions.
I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, any oral submissions made by the parties and the evidence listed earlier in this decision:
·the Application for Removal;
·the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] ATMO 84
Decision Date: 1 May 2024

CaseChat Overview and Summary

This matter concerned an application for the removal of a trade mark from the Register of Trade Marks, brought by Hasbro Inc (the Applicant) against Helen Gould (the Opponent). The dispute centred on whether the Opponent had established sufficient use of the trade mark in Australia for the registered goods to justify its continued registration. The decision was made by Nicholas Smith, Hearing Officer, Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the Opponent had demonstrated genuine use of the trade mark in Australia for the registered goods, or had made concrete preparations to use the trade mark, within a relevant period. This was in the context of an application for removal under the *Trade Marks Act 1995* (Cth). The Hearing Officer was required to determine if the continued registration of the trade mark would cause consumer confusion or practically impact the Opponent's interests, and whether to exercise discretion not to remove the mark.

The Hearing Officer found that the Opponent had provided limited evidence of use of the trade mark, particularly in the period 2012-2013. Apart from certificates of donation, there was no evidence of dealings or concrete preparations for future use in Australia for the registered goods. Claims of significant stock and marketing material were also unsupported by documentary evidence. Consequently, the Hearing Officer was unpersuaded that removal would lead to consumer confusion or practically impact the Opponent's interests. Upholding the integrity of the Register, the Hearing Officer determined it was not appropriate to exercise discretion against removal.

Accordingly, the Opponent's opposition to removal was not established. The Hearing Officer directed that the registration be removed from the Register one month from the date of the decision, with a stay of removal pending any appeal. The Applicant was awarded costs against the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

In the present case, the Opponent has provided limited evidence of use of the Trade Mark in 2012-13. Other than certificates of donation there is no evidence that the Opponent has had any dealings in connection with the Trade Mark in the last 10 years or has made concrete preparations to use the Trade Mark in the future in Australia for any of the Registered Goods. Nor are the Opponent’s claims to have significant stock and marketing material bearing the Trade Mark supported by documentary evidence. Given that, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods. Decision The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1277381 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.Costs The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks1 May 2024

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Baker McKenzie
Decision:	2024 ATMO 84 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Registration No.	1277381
Lodgement date	18 Dec 2008
Goods	Class 28: Children's toys (‘Registered Goods’)
Owner	Helen Gould
Trade Mark	Doh-Magic (‘Trade Mark’)

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Helen Gould, Opponent (‘Gould declaration’)	20 Nov 2022	Various unmarked documents
Evidence in answer
N/A
Evidence in reply
N/A