Invented Here B.V. v igus GmbH - [2025] ATMO 63

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Invented Here B.V. to application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by igus GmbH for cessation of protection of Protected International Trade Mark number 1452002 (IR 1090807) (classes 9, 12, 25) – [Re-]cycling – in the name of Invented Here B.V.

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Corrs Chambers Westgarth

Removal Applicant: Griffith Hack Lawyers

Decision:

2025 ATMO 63

Trade Marks Act 1995 (Cth) – application under section 17A.48C – s 92(4)(b) considered – use of trade mark established for subset of goods - discretion not exercised – protection of trade mark to be removed for some goods

Background

This matter concerns an application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] for cessation of protection for non-use of the following protected international trade mark (‘IRDA’):
[1] All references in this decision to sections are to sections in the Trade Marks Act 1995 (Cth) (‘Act’) and all references to regulations are to regulations in the Trade Mark Regulations 1995 (Cth) (‘Regulations’).
Trade mark number:  1452002
International Registration:                   1090807
Trade mark:  [Re-]cycling (‘Trade Mark’)
Filing date:  26 May 2011
Specification:  Class 9: Bicycle racing helmets; bicycle helmets;   glasses; sunglasses; sports glasses; bicycle racing   glasses; bicycle glasses
Class 12: Bicycles; bicycle baskets, also for animals; bags adapted for bicycles; handle bars bags and side bags adapted for vehicles and for bicycles; covers for bicycle bags, covers bicycles, bicycle crates, bicycle boxes, luggage carriers for vehicles; dress guards, chain guards, mud guards, systems for securing baskets or bags to bicycles, saddle covers, cushions suited for child's saddles, windbreak flaps and other similar bicycle parts not included in other classes
Class 25: Clothing, footwear and headgear; shirts, pants, body warmers, coats, jackets and wind resistant jackets; sports clothing; bicycle clothing; bicycle pants; bicycle racing clothing, pants and shirts for bicycle racing; underwear; rainproof clothing, rainwear, raincoats, overcoats, rainproof pants, rain ponchos, rain parkas and rain boots; waterproof hats; gloves (clothing), bicycle gloves and bicycle racing gloves (clothing); socks; sports shoes, bicycle racing shoes, bicycle shoes and hiking shoes; overshoes; caps; bonnets; bandanas (scarves)
(‘Protected Goods’)
On 17 April 2023 ignus GmbH (‘Removal Applicant’) filed an application under reg 17A.48C seeking the cessation of protection of the IRDA pursuant to reg 17A.48D, with respect to the ground under s 92(4)(b) in relation to all of the Protected Goods.
On 14 June 2023 Invented Here B.V. (‘Removal Opponent’) filed a Notice of Intention to Oppose, followed by its Statement of Grounds and Particulars (‘SGP’) on 12 July 2023.
The Removal Opponent then filed its evidence in support (‘EIS’) of its opposition in accordance with the Regulations as follows:
·Declaration of Marthijn Marinus Gerardus Henrickus Van Balveren, owner of the Removal Opponent, made on 29 November 2023, with Annexures MVB-1 to MVB-11 (‘Van Balveren

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: [2025] ATMO 63
Decision Date: 25 March 2025

CaseChat Overview and Summary

This decision concerns an opposition filed by Invented Here B.V. (the Removal Opponent) against the trade mark of igus GmbH. The dispute arose from an application to remove igus GmbH's trade mark from the Register of Trade Marks on the grounds of non-use. The hearing officer was tasked with determining whether the trade mark had been genuinely used in Australia in relation to certain goods.

The primary legal issue before the hearing officer was whether the Removal Opponent had successfully demonstrated non-use of the trade mark in relation to specific goods across classes 9, 12, and 25 of the Nice Classification. This required an assessment of the evidence presented by igus GmbH to rebut the allegation of non-use. The hearing officer also had to consider the exercise of discretion regarding the extent to which protection for the trade mark should be retained or cease.

The hearing officer reasoned that while there was evidence of use for some goods, particularly in class 12, the overall use and promotion of the trade mark were limited. The public interest in the integrity of the Register was considered to outweigh the private interest in retaining protection for a broader range of goods. Consequently, the hearing officer found it unreasonable to exercise discretion to preserve the trade mark's protection for all remaining goods in classes 9, 12, and 25. However, the Removal Opponent had partially rebutted the allegation of non-use in relation to specific bicycle-related items in class 12, leading to a partial refusal to cease protection entirely.

The hearing officer directed that the relevant part of the Register of Trade Marks be amended one month from the date of the decision, with specific items struck through to indicate deletion. Provisions were made for the cessation of protection to be deferred if a notice of appeal was served before the expiry of that month, pending the outcome of any appeal. Costs were not awarded to either party, as both had achieved a measure of success.

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

Given the limited use and promotion of the Trade Mark, I do not consider that it is appropriate to exercise my discretion to retain protection of the Trade Mark for any of the Remaining Protected Goods. In my view, the public interest in the integrity of the Register outweighs the private interest in retaining protection for a broader range of goods. In the circumstances, I do not find it reasonable to exercise my discretion to preserve the Remaining Protected Goods in classes 9, 12 and 25. Decision The Removal Opponent has partially rebutted the allegation of non-use in relation to the following Protected Goods in class 12:bags adopted for bicycles; handle bar bags and side bags adapted for bicycles; bicycle crates Therefore, I refuse to cease protection of the Trade Mark in its entirely. I direct that one month from the date of this decision the IRDA be amended as set out below (note: items struck through are deleted):Class 9: Bicycle racing helmets; bicycle helmets; glasses; sunglasses; sports glasses; bicycle racing glasses; bicycle glassesClass 12: Bicycles; bicycle baskets, also for animals; bags adapted for bicycles; handle bars bags and side bags adapted for vehicles and for bicycles; covers for bicycle bags, covers bicycles, bicycle crates, bicycle boxes, luggage carriers for vehicles; dress guards, chain guards, mud guards, systems for securing baskets or bags to bicycles, saddle covers, cushions suited for child's saddles, windbreak flaps and other similar bicycle parts not included in other classesClass 25: Clothing, footwear and headgear; shirts, pants, body warmers, coats, jackets and wind resistant jackets; sports clothing; bicycle clothing; bicycle pants; bicycle racing clothing, pants and shirts for bicycle racing; underwear; rainproof clothing, rainwear, raincoats, overcoats, rainproof pants, rain ponchos, rain parkas and rain boots; waterproof hats; gloves (clothing), bicycle gloves and bicycle racing gloves (clothing); socks; sports shoes, bicycle racing shoes, bicycle shoes and hiking shoes; overshoes; caps; bonnets; bandanas (scarves) If the Registrar is served with a notice of appeal before then, I direct that the partial cessation of protection shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the IRDA be dealt with as the Court sees fit. Costs Both parties sought an award of costs. As both parties have had a measure of success, I decline to award costs.Louise TuohyHearing OfficerOppositions and HearingsTrade Marks and Designs25 March 2025

Ratio Decidendi

Legal Principle Established

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