Mathew O'Reilly v RenewGen Pty Ltd - [2023] ATMO 5

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by RenewGen Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Mathew O'Reilly for removal of trade mark number 1751386 (25, 33) – Spirit of Byron – in the name of RenewGen Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: HWL Ebsworth Lawyers

Applicant: IP Wealth Pty Ltd

Decision:

2023 ATMO 5

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows use of the Trade Mark during the relevant period for a subset of the goods for which it is registered – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the goods for which it is registered

Background

This decision is pursuant to an application made on 15 March 2021 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Mathew O'Reilly (‘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.

1751386

Lodgement date

10 February 2016

Goods

Class 25: Apparel (clothing, footwear, headgear)

Class 33: Alcoholic beverages (except beer)

(‘Registered Goods’)

Owner

RenewGen Pty Ltd

Trade Mark

Spirit of Byron

(‘Trade Mark’)

2. RenewGen Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 6 May 2021 and a Statement of Grounds and Particulars (‘SGP’) on 7 May 2019. The Applicant filed a Notice of Intention to Defend on 1 July 2021.

The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’). This material will be discussed in more detail below. The Applicant chose not to file any evidence in answer (‘EIA’).
The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima…

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 5
Decision Date: 25 January 2023

CaseChat Overview and Summary

In *Mathew O'Reilly v RenewGen Pty Ltd*, heard before Nicholas Smith J in the Federal Court of Australia, the applicant sought the removal of a registered trade mark from the Register. The respondent, RenewGen Pty Ltd, was the registered owner of the trade mark. The grounds for removal were based on non-use of the trade mark for certain goods for which it was registered, pursuant to section 92(4)(b) of the *Trade Marks Act 1995* (Cth).

The central legal issue before the Court was whether the respondent had made genuine use of the trade mark in Australia during the relevant period for all the goods for which it was registered. If not, the Court was required to consider whether the Registrar's discretion to allow the trade mark to remain on the Register for some or all of those goods should be exercised in favour of the respondent.

Nicholas Smith J reasoned that the evidence presented by the applicant demonstrated that the respondent had indeed used the trade mark during the relevant period, but only for a subset of the goods for which it was registered. His Honour found that the evidence did not establish use for the remaining goods. Consequently, the Court determined that it was not appropriate to exercise the Registrar's discretion to permit the trade mark to remain on the Register for those goods for which no use had been proven. The Court ordered that the trade mark be removed from the Register in respect of those specific goods.

Orders