Louis Vuitton Malletier v Mark Peter Woods and Bruce Peter Woods

[2025] ATMO 94

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Mark Peter Woods to application under section 92 of the Trade Marks Act 1995 (Cth) by Louis Vuitton Malletier to remove trade mark number 531732 (class 25) - MARQUE’S - in the name of Mark Peter Woods and Bruce Peter Woods

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Self-represented

Applicant: Corrs Chambers Westgarth

Decision:

2025 ATMO 94

Trade Marks Act 1995 (Cth) – application under section 92 – no dated evidence of use in the proceedings – no evidence of obstacles to use – discretion not exercised – trade mark to be removed

Background

1. This matter concerns an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking removal of a trade mark from the Australian Register of Trade Marks (‘Register’) for non-use. I extract the details of the trade mark below:

Trade mark number:               531732

Trade mark:  MARQUE’S (‘Trade Mark’)

Owner:  Mark Peter Woods and Bruce Peter Woods (‘Owners’)

Filing date:  28 March 1990

Goods:  Class 25: menswear (‘Registered Goods’)

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

1. On 14 February 2024 Louis Vuitton Malletier (‘Removal Applicant’) filed a request for removal of the Trade Mark for non-use under s 92(4)(b) for all of the Registered Goods.

2. On 19 April 2024 Mark Peter Woods (‘Removal Opponent’) filed a Notice of Intention to Oppose the application for removal. On 16 May 2024 the Removal Opponent filed its Statement of Grounds and Particulars (‘SGP’) and on 27 May 2024 the Removal Applicant filed its Notice of Intention to Defend.

3. On 2 September 2024 the Removal Opponent filed its Evidence in Support (‘EIS’) being a declaration of Mark Peter Woods, one of the Owners of the Trade Mark, dated 2 September 2024, with various unlabeled attachments (‘Woods’).

4. On 18 October 2024, the Removal Applicant’s attorney advised by letter that the Removal Applicant would not be filing Evidence in Answer.

5. On 4 November 2024, the Removal Applicant requested to be heard. The Removal Opponent did not request to be heard. On 1 May 2025, the Removal Applicant filed its written summary of submissions prepared by its attorney. I heard the matter by video conference on 8 May 2025. Jürgen Bebber and Fabien Lalande of Corrs Chambers Westgarth appeared on behalf of the Removal Applicant. I am to decide the matter as a delegate of the Registrar of Trade Marks.

Relevant period and onus

1. Section 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:

   …

   (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.

2. Sufficient time has passed for s 92(4)(b) to be alleged.[2] By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish use of the Trade Mark in Australia in the three year period ending on 14 January 2024 (‘Relevant Period’) or that the Trade Mark was not used in relation to the Registered Goods because of circumstances that were an obstacle to the use of the Trade Mark during the Relevant Period. The Removal Applicant alleges that there has been no use of the Trade Mark in relation to any of the Registered Goods in the Relevant Period. The allegation can be rebutted by establishing use by the owner of the Trade Mark or by an ‘authorised user’.

   [2] Section 93(2).

3. It is the Removal Opponent who must rebut the allegation of non-use.[3] Any findings of fact are based on the civil standard of the balance of probabilities.[4]

   [3] Section 100(1)(c).

   [4] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).

4. ‘Use as a trade mark’ is use of a trade mark as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to those goods or services.[5] This does not require the actual sale or purchase of the goods or services.[6] A commercial dealing in relation to the goods or services under, or by reference to, the sign can be sufficient to constitute ‘use as a trade mark’. A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge the onus,[7] although if only a single instance of use is alleged it should be established by, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[8]

   [5] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

   [6] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).

   [7] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [8] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

5. If the requisite use is not established, in accordance with s 101 I may decide to remove the Trade Mark, or if satisfied it is reasonable to do so, decide to not the remove it. I explain this discretion in more detail further below.

Consideration

Use of the Trade Mark in the Relevant Period

1. Woods is very brief in terms of its textual contents. I extract the contents below:

1. The attachments to Woods consist of images of products which bear signs which contain the word MARQUES and MARQUE’S on clothing and other goods. There is also an assortment of what appear to be posters, swing tags and labels which contain the words MARQUES or MARQUE’S, perhaps indicating some history existing behind the brand MARQUES. One of the images is of a swing sell tag which has the word MARQUE’s and ‘Est. 1986’. Some of the images show labels on shirts which have the word MARQUE’s partly obscured.

2. Use of the Trade Mark must be established as having had occurred in the Relevant Period. All of the attachments to Woods and their contents are not dated in any clear way. For many of the attachments, there is no indication of what goods or services any displayed trade mark might be in relation to, nor any indication of specifically where or when the use of the sign took place. The statements made in Woods which refer to these attachments and the continued use of the Trade Mark amount to nothing more than bald statements without any corroborating evidence dated in the Relevant Period.

3. The SGP also states the following:

   We use the trademark for clothing that we retail in outlets owned by our family in Central Queensland. The trademark “Marque’s” has been used continuously for this purpose since it was registered. It has also been used for wholesale clothing. We strenuously defend the claim against removing this trademark from our ownership.

   We have no issue with providing evidence of this trademarks use if required

4. It is the onus of the Removal Opponent to demonstrate use of the Trade Mark in the Relevant Period. The evidence before me in these proceedings is so limited as to details about when, where and to which products to which any sign has been applied, that it cannot reasonably sustain such a finding on the balance of probabilities.

5. Accordingly, I am not satisfied that the Removal Opponent has used the Trade Mark or a substantially identical trade mark, in relation to any of the Registered Goods in the Relevant Period.

Obstacles to use

1. There is no evidence demonstrating any obstacle which prevented good faith use of the Trade Mark in relation to the Registered Goods during the Relevant Period.

Registrar’s discretion

1. Section 101(3) provides me with a broad discretion to not remove the Trade Mark from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. I must consider whether this discretion should be exercised in relation to the Registered Goods. However, the Removal Opponent need not establish ‘exceptional circumstances’.[9]

   [9] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).

2. Various factors are to be considered in applying s 101. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the Federal Court observed of s 101(3) and the relevant factors:

   [t]he following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[10]

   [10] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

3. The Removal Opponent provides basically no evidence or any reason I should exercise the discretion. The sole factor that might have been relevant is the suggestion that the Opponent’s business has been operating since 1986, which suggests a period of almost 40 years of operation. However, like the rest of the evidence in these proceedings, the specific goods and/services for which any trade has occurred are mostly not clear to me and neither is the volume of any trade in goods bearing the Trade Mark. I am conscious of the public interest in the Register reflecting signs that are used by traders. Overall, the Removal Opponent provides no compelling reason for the Trade Mark to remain on the Register for the Registered Goods.

4. Balancing the relevant considerations and noting all of the evidence, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Registered Goods.

Decision

1. The Removal Opponent has not rebutted the allegation of non-use in respect of the Trade Mark and I am not satisfied it is reasonable to exercise the discretion to allow the Trade Mark to remain on the Register.

2. I direct that one month from the date of this decision registered trade mark 531732 be removed from the Register.

3. If the Registrar is served with a notice of appeal within the relevant timeframe, the Trade Mark shall be treated in accordance with the decision of the court.

Costs

1. The Removal Applicant sought its costs. Costs will ordinarily follow the event. I award costs against the Removal Opponent in accordance with Schedule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

28 May 2025