Morgan & George Gerakis v Nathan Darma

This matter concerned an opposition by Morgan & George Gerakis (the Opponents) to an application by Nathan Darma (the Applicant) to register the trade mark 'BEAST MODE'. The dispute centred on the ownership of the trade mark, with the Opponents alleging the Applicant was not the true owner. The decision was made by Iain Campbell Thompson, Hearing Officer, in the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the Applicant was the owner of the trade mark 'BEAST MODE' for the purposes of registration, as provided for under section 58 of the relevant Act. This required determining who was the first to use the trade mark in the course of trade in relation to the specified goods, or to apply to register it, whichever occurred earlier.

The Hearing Officer reasoned that ownership of a trade mark arises from either use or application for registration, with the first user or applicant being the owner. While the Opponents had not filed formal evidence in support of their opposition, they had submitted a printout of an eBay page showing use of the 'BEAST MODE' trade mark on gym clothing on 3 July 2013. The Applicant acknowledged researching the Opponents' use and did not dispute their prior use of an identical trade mark. The Hearing Officer considered this information, despite its informal nature, permissible under regulation 21.15(4) of the Trade Marks Regulations 1995, which allows the Registrar to be informed in a way they reasonably believe appropriate. Applying the principle that even minimal prior use of a substantially identical trade mark on the same kind of goods is sufficient to establish ownership, the Hearing Officer concluded that the Opponents had demonstrated earlier use of the 'BEAST MODE' trade mark than the Applicant's use or application date.

Consequently, the Hearing Officer found that the ground for opposition under section 58 of the Act was established. As a result, the Hearing Officer decided to refuse to register the trade mark 'BEAST MODE' in the name of the Applicant.