Opposition by Clive Wilson to an application under regulation 17A.48C of the Trade Marks Act 1995 (Cth) by Richard Gower for cessation of protection of International Registration Number 812242 (Australian...

This matter concerned an application by Richard Gower for the cessation of protection of an international trade mark registration in Australia, pursuant to regulation 17A.48C of the *Trade Marks Act 1995* (Cth). The opposition to this application was brought by Clive Wilson. The dispute arose within the context of a broader disagreement between the parties concerning the ownership and use of the trade mark as a band name, stemming from their shared history as members of the 1970s musical group, Racey.

The legal issues before the Hearing Officer were whether the trade mark had been used in Australia during the relevant three-year period preceding the application for cessation, whether there were any obstacles to its use during that period, and whether, in light of these factors, the discretion to allow the trade mark to remain protected in Australia should be exercised in favour of the opponent. The relevant period for assessing use was the three years ending on 26 January 2020.

The Hearing Officer found that the Removal Opponent had not established use of the trade mark in Australia in relation to the specified goods and services during the relevant period, nor had he demonstrated the existence of relevant obstacles to such use. While the evidence indicated a history of success for the original band and attempts by a reformed version of the band to tour Australia, the Hearing Officer was not satisfied that these circumstances provided sufficient justification to exercise discretion in favour of allowing the trade mark to remain protected. Consequently, the Hearing Officer declined to exercise discretion to allow the trade mark to remain protected.

The Hearing Officer ordered that the protection of the trade mark should cease in relation to the specified goods and services. However, to allow for the possibility of appeal, the cessation of protection was stayed for at least one month from the date of the decision, or until any appeal proceedings were resolved.