Jamie Andrew Sutherland v Frank Mazal - [2023] ATMO 71

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jamie Andrew Sutherland to an application under section 92 of the Trade Marks Act 1995 (Cth) by Frank Mazal for removal of trade mark number 649924 (25) – ANARCHY (Figurative) – in the name of Jamie Andrew Sutherland

Delegate:

Nicholas Smith

Representation:

Opponent: Michael Buck IP

Applicant: Legalvision ILP Pty Ltd

Decision:

2023 ATMO 71

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (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 15 April 2021 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) by Frank Mazal (‘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.

649924

Lodgement date

6 January 1995

Goods

Class 25: Articles of clothing, headgear, footwear

(‘Registered Goods’)

Owner

Jamie Andrew Sutherland (‘Opponent’)

Trade Mark

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. The Opponent has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal and a Statement of Grounds and Particulars (‘SGP’) on 15 July 2021. The Applicant filed a Notice of Intention to Defend on 29 September 2021.

The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’). The Applicant chose not to file any evidence in answer. This material will be discussed in more detail below.
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 21 March 2022, the Applicant requested a hearing by submissions and paid the appropriate fee. The matter was set down for a hearing on 17 February 2023. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks. In line with usual practice, a letter was sent to the parties on 14 December 2022 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 10 February 2023 (‘Applicant’s Submissions’). The Opponent did not file any submissions.
6. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have…

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: [2023] ATMO 71
Decision Date: 6 June 2023

CaseChat Overview and Summary

Jamie Andrew Sutherland opposed an application by Frank Mazal, brought under section 92 of the *Trade Marks Act 1995* (Cth), for the removal of trade mark number 649924, registered as "ANARCHY (Figurative)", from the Register of Trade Marks. The application for removal was based on grounds of non-use.

The primary legal issue before Nicholas Smith J was whether the trade mark had been used in Australia in relation to the goods for which it was registered. Specifically, the court was required to determine if the evidence presented by Mr. Sutherland established genuine use of the trade mark in the course of trade in Australia.

Nicholas Smith J found that the evidence of use provided by Mr. Sutherland was insufficient to demonstrate genuine use of the trade mark in Australia. The court applied the principles established in trade mark law concerning the requirement for actual and substantial use of a mark in the ordinary course of trade, rather than token or sporadic use. The evidence did not meet this threshold, leading to the conclusion that the trade mark should be removed from the Register.

Orders