Neil Pryde Limited v Callaway Golf Company

This matter concerned an application by Neil Pryde Limited (the Opponent) to oppose the removal of its trade mark from the Register, which had been sought by Callaway Golf Company (the Applicant). The dispute arose from the Applicant's application to remove the Opponent's trade mark from the Register in respect of certain goods, specifically 'Games and playthings; gymnastics and sporting articles not included in other classes; decorations for Christmas trees' (the Removal Goods). The hearing officer was Nicholas Smith.

The primary legal issue before the hearing officer was whether the Opponent had established use of its trade mark in Australia during the relevant period for the Removal Goods, or whether there were circumstances that constituted an obstacle to use, thereby justifying the continued registration of the trade mark. Alternatively, the Opponent had to satisfy the Registrar that it was reasonable to exercise discretion to keep the trade mark on the Register despite a lack of use. Given the trade mark had been registered for more than five years, the hearing officer focused on the ground of removal under section 92(4)(b) of the relevant Act.

The hearing officer found that the Opponent's evidence did not demonstrate use of the trade mark for anything other than windsurfing equipment. While the Opponent provided evidence of its trade mark being used on windsurfing goods since 2005, and claimed continuous use in Australia, the annexures provided were either not clearly used in Australia, dated outside the relevant period, or undated. The invoices presented related solely to windsurfing equipment. The hearing officer noted that the level of sales of goods bearing the trade mark in Australia during the relevant period was low. In contrast, the Applicant provided evidence that golf equipment, for which it sought registration of a similar mark, is sold through different trade channels than windsurfing equipment.

Ultimately, the hearing officer determined that the Opponent had not established its opposition to the partial removal of the trade mark. The Opponent's private commercial interest in maintaining the registration was deemed insufficient to outweigh the Applicant's commercial interest and the public interest in the integrity of the Register. Consequently, the hearing officer directed that the trade mark be removed from the Register in respect of the Removal Goods, with costs awarded against the Opponent.