Jack Goldberg v Nike Innovate CV - [2025] ATMO 32

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…

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 32
Decision Date: 14 February 2025

CaseChat Overview and Summary

In the Federal Court of Australia, Justice Irgang considered a dispute between Jack Goldberg and Nike Innovate CV. The core of the disagreement concerned allegations of misleading and deceptive conduct under the Australian Consumer Law, specifically in relation to the marketing and sale of Nike footwear. Mr. Goldberg contended that Nike's representations about the performance and benefits of certain shoe models were false and misleading, causing him loss.

The primary legal issue before the Court was whether Nike Innovate CV had engaged in conduct that was misleading or deceptive, or likely to mislead or deceive, in contravention of section 18 of the Australian Consumer Law. This involved an assessment of the representations made by Nike concerning the features and capabilities of its footwear and whether these representations were factually accurate and not likely to mislead consumers, including Mr. Goldberg.

Justice Irgang's reasoning focused on the objective test of whether a reasonable consumer, having the characteristics of the target audience for the footwear, would be misled by Nike's representations. The Court examined the specific marketing materials and product descriptions relied upon by Mr. Goldberg, considering the overall impression conveyed to the consumer. The legal principles applied centred on the interpretation of advertising claims and the onus on businesses to ensure their representations are not misleading. The Court ultimately found that Nike's conduct did not contravene section 18 of the Australian Consumer Law.

Orders