Jack Goldberg v Nike Innovate CV
[2025] ATMO 32
•14 February 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jack Goldberg to an application under section 92 of the Trade Marks Act 1995 (Cth) by Nike Innovate C.V. for removal of trade mark number 1315480 (10, 25) – BRS BLISTER REDUCTION SOCKS – in the name of Jack Goldberg
Delegate:
Bianca Irgang
Representation:
Opponent: Brian Goldberg
Applicant: Donna Short of Addisons lawyers
Decision:
2025 ATMO 32
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal - Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use for the goods – 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 24 November 2021 under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Nike Innovate C.V. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect all of the goods for which the trade mark is registered, that is, the application is for full removal of the trade mark.
Registration No.
1315480
Lodgement date
20 August 2009
Goods
Class 10: Crutch sockets; elasticised socks for medical purposes; elasticised socks for surgical purposes; flight socks; prosthesis joint sockets; prosthetic socks for limbs; socks for varicose veins; support socks to prevent deep vein thrombosis
Class 25: Bed socks; footless socks; slipper socks; sock suspenders; socks; sports socks (‘Opponent’s Goods’)
Owner
Jack Goldberg
Trade Mark
BRS BLISTER REDUCTION SOCKS
(‘Trade Mark’)
2. 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.
3. Jack Goldberg (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 12 December 2021 along with his Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 10 March 2022.
The only evidence filed in this matter is the following:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Brian Goldberg, Son of the Applicant (‘Goldberg declaration’)
20 June 2022
Nil
5. 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 15 March 2024 the Applicant requested a hearing and paid the appropriate fee. The matter was set down for a hearing on 3 February 2025. The Applicant filed written submissions on 27 January 2025 (‘Applicant’s Submissions’). The Opponent did not ask to be heard.
6. I am a delegate of the Registrar and I heard the matter on 3 February 2025 via videoconference. At the hearing, Donna Short of Addisons Lawyers appeared for the Applicant. I will now decide the matter on the basis of the following relevant material and the evidence listed earlier in this decision:
·The Application for Removal;
·The Notice of Intention to Oppose and SGP;
·The Applicant’s oral and written Submissions.
The Relevant Provisions
7. Part 9 deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:
92 Application for removal of trade mark from Register etc.
(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) any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services);
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 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 24 October 2021 (‘Relevant Period’).
9. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.
[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
10. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(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 opposed application relates ( relevant goods and/or services ); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.[…]
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
(b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:(i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.
11. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]
[2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.
12. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.
13. The Applicant has applied for the full removal of the Trade Mark and the goods that the Applicant seeks removal for are:
Class 10: Crutch sockets; elasticised socks for medical purposes; elasticised socks for surgical purposes; flight socks; prosthesis joint sockets; prosthetic socks for limbs; socks for varicose veins; support socks to prevent deep vein thrombosis
Class 25: Bed socks; footless socks; slipper socks; sock suspenders; socks; sports socks
14. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5]
[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).
[5] Act s 7(3).
15. The principles regarding when a trade mark has been used as a badge of origin were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Selfcare’), in which the High Court noted the following:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]
[6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
Discussion
Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five[7] years.[8] As the Trade Mark had been registered for more than five years as at the date of the application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application for removal the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[9]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).
[7] Or three years for trade marks filed from 24 February 2019 onwards. See changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.
[8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off (7th edition, 2022 Thomson Reuters) [70.510].
[9] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).
If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.
Use of the Trade Mark in the relevant period
The Goldberg declaration states that the Opponent is a medical doctor who developed a sock to assist in blister prevention during physical activities. Mr Goldberg states there has been usage of the product, specifically, that the original socks have been worn as recently as August 2021 during sports activities by a family member who suffers blisters in their sport.
The Goldberg declaration clarifies that there has been no recent manufacturing of the socks for numerous reasons and the control and usage of the socks has been limited to a single family member. However, Mr Goldberg claims that the socks are a critical component of the medically oriented developments by the Opponent and that together with the innovative footwear, Rotasole and Dr + Son, that these products have been intended to be reproduced. Mr Goldberg asserts that there have been many discussions with investors, entrepreneurs and athletes to find a way for the Opponent to have these medically developed socks available to the market.
According to the Goldberg declaration, the Opponent did visit Boston in the USA to meet a commercialisation marketing firm in 2019 where the socks were included and discussed with innovative footwear but funds were not raised to progress this project. Mr Goldberg attributes the slow nature of investors and the lack of funding opportunities in Australia to the delay in commercialising the Opponent’s goods but states that the intention to do so is there which is demonstrated by renewal of the Trade Mark in 2019.
In evaluating the Opponent’s evidence there is an important threshold determination that I make, namely that all of the statements made in the Goldberg declaration are not supported by any documentation or examples of use of the Trade Mark. The entirety of the Opponent’s evidence is unsupported assertions.
I find that there is no evidence before me that the Opponent has used the Trade Mark during the Relevant Period on the Opponent’s Goods.
Obstacles to use
23. An Opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three-year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’. The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[10]
[10] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) [2001] FCA 261, [47] (Drummond J)
The Opponent has claimed that during the Relevant Period, that the intention to commercialise the Opponent’s Goods and use the Trade Mark was always present but that the slow nature of investors and the lack of funding opportunities in Australia posed an obstacle to the use of the Trade Mark. Additionally, the Opponent had numerous health issues over the past years which has affected his ability to self-fund the manufacture and sale of the Opponent’s Goods and that COVID stopped all travel so that the Opponent had not been able to visit manufacturers in Asia.
I acknowledge that the Covid-19 pandemic did impact many businesses’ activities and plans. However, there is nothing in the evidence before me that demonstrates or provides sufficient detail on how the pandemic impacted on the plans of the Opponent to manufacture or sell the Opponent’s Goods during the Relevant Period, particularly since the Goldberg declaration states that the Opponent did successfully manage some international travel in 2019.
The Goldberg declaration states that the Opponent had the ability to make a prototype pair of socks in Australia which has then been used by a family member. However, the Opponent remains silent on why a period of over decade has passed with minimal to no use of the Trade Mark. None of the statements made in the Goldberg declaration rises to the level of a single, genuine commercial use of the Trade Mark in Australia as defined in Nodoz and Selfcare. Nor has the Opponent provided sufficient material to persuade me that there have been any obstacles to prevent use during the Relevant Period. It appears that the Opponent had not yet chosen or sourced a manufacturer or investor for any of the Removal Goods.
I am not satisfied that the Opponent’s failure to use the Trade Mark was because of circumstances that were an obstacle to use pursuant to s 100(3)(c).
Registrar’s Discretion
28. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Registered Services.[11] The burden of persuasion falls in this regard falls on the Opponent.[12]
[11] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
[12] Ibid.
29. In coming to a decision I refer to CUB Pty Ltd (formerly Fosters Australia Ltd) v Elixir Signature Pty Ltd[13], and the factors to be considered when making a decision whether or not to exercise of the Registrar’s discretion were:
[13] [2013] ATMO 74 (Hearing Officer Windsor)
(a) There had been no abandonment of the trade mark;
(b) The registered proprietors of the mark still had a residual reputation in the mark;
(c) There had been sales by the registered proprietors for goods for which removal was sought since the relevant period ended;
(d) The applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and
(e) The registered proprietors were not aware of the applicant’s sales under the mark.
30. The Opponent has argued that it has not abandoned the Trade Mark. However, I am not persuaded by this argument. The Opponent’s evidence is unsupported assertions made in the Goldberg declaration. There is nothing in its evidence that demonstrates the Opponent had any commercially significant plans to launch products bearing the Trade Mark onto the Australian market during the Relevant Period. What the evidence does demonstrate is that the Opponent has not made any significant inroads into manufacturing goods to bear the Trade Mark, much less made any genuine effort to enter the Australian marketplace.
31. Without evidence to support the Opponent’s assertions, I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Opponent’s Goods.
Decision
32. The Opponent has not established its opposition to removal. Accordingly, I direct that registration number 1315480 be removed from the Register one month from the date of this decision.
33. If the Registrar is served with a notice of appeal before then 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
34. The Applicant has been successful in relation to the application for the 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.
Bianca Irgang
Hearing Officer
Delegate of the Registrar of Trade Marks
14 February 2025
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