Opposition by Moose Enterprise Pty Ltd to application under section 92 of the

[2025] ATMO 84

TRADE MARKS ACT 1995

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

Re:Opposition by Moose Enterprise Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Brandix Brands & Retail Pte. Ltd to remove trade mark number 1895713 (class 25) - MOOSE - in the name of Moose Enterprise Pty Ltd

Delegate:	Anne Makrigiorgos
Representation:	Opponent: Andrew Sykes of Counsel instructed by the Opponent Applicant: Melissa Marcus of Counsel instructed by Switch Legal
Decision:	2025 ATMO 84 Trade Marks Act 1995 (Cth) – application under section 92 – no use or authorised use established – discretion not exercised – trade mark to be removed

Background

1. On 10 August 2023, Brandix Brands & Retail Pte. Ltd (‘Applicant’) filed an application under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] (‘Removal Application’) for the complete removal of the following registered trade mark in the name of Moose Enterprise Pty Ltd (‘Opponent’):

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Registration Number	Trade Mark	Goods and Class	Filing Date
1895713	MOOSE (‘Trade Mark’)	Class 25: Casual clothing and footwear for children but excluding clothing for use with all-terrain vehicles and motorcycles; sleepwear and slippers (‘Registered Goods’)	19 December 2017

1. The Opponent has opposed the Removal Application, filing a Notice of Intention to Oppose on 28 September 2023 and a Statement of Grounds and Particulars (‘SGP’) on 24 October 2023. The Applicant filed a Notice of Intention to Defend on 20 November 2023.

2. The Opponent filed Evidence in Support (‘EIS’) on 20 February 2024 and Evidence in Reply (‘EIR’) on 2 August 2024. The Applicant filed Evidence in Answer (‘EIA’) on 23 May 2024.

3. The parties were given the opportunity to be heard. An oral hearing was requested by both parties and heard by me as a delegate of the Registrar of Trade Marks on 29 April 2025 by video conference. Andrew Sykes of Counsel instructed by Michelle Groves of the Opponent (observed by Cara Gerace of the Opponent) appeared for the Opponent. Melissa Marcus of Counsel (observed by Natalie Williams of Switch Legal and Sapna Liyanage, Chathuri Jayasuriya, Pamudi Gunasekara and Eshan De Zilva of IP Chambers, the Applicant’s Sri Lankan representatives) appeared for the Applicant. The parties’ oral submissions were supplemented by written submissions filed prior to the hearing. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written and oral submissions of the parties.

   Evidence

4. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
EIS
Michelle Groves, Group General Counsel of the Opponent (‘Groves 1’)	20 February 2024	A to H
EIA
Natalie Rose Williams, legal representative of the Applicant (‘Williams’)	23 May 2024	NRW-1 to NRW-3
EIR
Michelle Groves (‘Groves 2’)	2 August 2024	I to L

Legal Framework

1. Section 92 relevantly provides (notes omitted):

   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:

   (a)…

   (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. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the Trade Mark has in fact passed.

   [2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

3. Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Mark in relation to the Registered Goods is the three year period ending on 10 July 2023 (‘Relevant Period’).

4. The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Mark in respect of any or all of the Registered Goods identified in the Removal Application during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5]

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

   [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52.

   [5] s 100(3)(c).

5. In Blount Inc v Registrar of Trade Marks, Branson J observed:

   Where the Act requires the Registrar to be ‘satisfied’ of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[6]

   [6] [1998] FCA 440 (citations omitted).

6. It follows that unless the Opponent provides convincing proof of use of the Trade Mark in the Relevant Period in relation to the Registered Goods to the satisfaction of the Registrar, the opposition to removal will not be established.

7. In Woolly Bull Enterprises Pty Ltd v Reynolds,[7] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. He said:

   Where an overseas trader has in some way committed goods for export to Australia, eg, by actually shipping them or by earmarking them for export in some other way, there will be actual trade in the marked goods in Australia sufficient to show use of the mark here where the foreign goods have been offered for sale in Australia under the mark, though none have yet arrived here.[8]

   [7] [2001] FCA 261, [16].

   [8] Ibid [20].

8. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[9] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[10] The fewer acts relied on the more solidly ought they to be established.[11]

   [9] Ibid [17].

   [10] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).

   [11] Ibid.

9. Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[12] Similarly, bald assertions of use during the relevant period which are not supported by clearly dated documentary evidence should be afforded little weight.[13]

   [12] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).

   [13] Aristedes Maniatis v Roche Diagnostics GmbH [2022] ATMO 59, [26] (Hearing Officer Smith); Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno).

10. Finally, the decision-maker may not be persuaded by evidence that is solely from internal files or that is circumstantial.[14]

    [14] Nodoz (n 10); Re Trina Trade Mark [1977] RPC 131.

11. Thus, if an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims.

12. The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of the sign as a badge of origin.[15]

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

13. The principles concerning trade mark use are well settled. The Full Court in Nature’s Blend Pty Ltd v Nestlé Australia Ltd[16] summarised the principles regarding use as a trade mark:

    (1) Use as a trade mark is use of the mark as a ‘badge of origin’, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

    (2) A mark may contain descriptive elements but still be a ‘badge of origin’.

    (3) The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand.

    (4) The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use ‘as a trade mark’.

    (5) Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or ‘context’) of the impugned words.

    (6) In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it.

    [16] [2010] FCAFC 117, [19] (Stone, Gordon and Mckerracher JJ) (citations omitted).

14. Use in good faith of a trade mark includes use of the trade mark with additions or alterations not substantially affecting its identity.[17] This has been interpreted to require that the two marks must be substantially identical to each other.[18]

    [17] Sections 7(1) and 100(3).

    [18] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [256], affirmed in Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130, [35]–[39] and PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ) (‘PDP Capital’).

15. The test for assessing substantial identity involves a side by side comparison of the two marks. The Court must be satisfied that, when viewed side by side, having regard to their similarities and differences, a total impression of similarity emerges from a comparison of the two marks.[19]

    [19] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12]; PDP Capital [161]; Carnival Cruise Lines Inc v Sitmar Cruises Ltd 31 IPR 375, 391.

16. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, the Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them:

    The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[20]

    [20] [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).

17. The use of the trade mark must be by the registered owner. Section 7(3) provides that an ‘authorised use’ of a registered trade mark is taken to be use of the mark by the registered owner. ‘Authorised use’ and ‘authorised user’ are defined in s 8, which provides:

    Definitions of authorised user and authorised use

    (1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

    (2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

    (3)If the owner of a trade mark exercises quality control over goods or services:

    (a)dealt with or provided in the course of trade by another person; and

    (b)in relation to which the trade mark is used;

    the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

    (4)If:

    (a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

    (b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

    the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

    (5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

18. Section 101 provides the Registrar with the discretion to remove the Trade Mark from the Register in respect of any, or all, of the goods for which it is registered. Relevantly, the section also provides:

    (3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

    (4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

    (a)similar goods or closely related services; or

    (b)similar services or closely related goods;

    to those to which the application relates.

    Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2:For registered owner see section 6.

    Summary of Evidence

    EIS

19. Groves 1 states that the Opponent is a designer and manufacturer of toys and lifestyle products.

20. Groves 1 declares that the Opponent released a girls’ collectible line of grocery and fashion themed characters under the trade mark SHOPKINS in 2014. The SHOPKINS brand has since become an established entertainment franchise which has expanded beyond toys to include licensed apparel including clothing. As part of this franchise, the Opponent licensed Caprice Australia Pty Ltd (‘Caprice’):

    ·     between 2015 to 2019 (before the Relevant Period) to use the Trade Mark, the SHOPKINS trade mark and Shopkins characters on apparel, footwear and headwear (‘Licensed Goods’) (‘Licence 1’). Groves 1 exhibits two undated photographs of a childrens’ top showing its swing tag and label claimed to be from 2015 to 2019. While the photographs are undated, the label on the childrens’ top bears a stylised version of the trade mark SHOPKINS and has a copyright claim of 2013 followed by the word Moose and on the swing tag, the trade mark  appears beside the following wording:

    Under Licence By.

    © MOOSE ENTERPRISE PTY LTD 2017

    29 GRANGE ROAD, CHELTENHAM

    VIC 3192 AUSTRALIA

    below this wording is the website address on the swing label are details of Caprice and a price tag that states ‘LICENSED SPK HOODED DRESS’.

    ·     between 2018 to 2020 (before the Relevant Period) to use the Trade Mark, the PIKMI POPS trade mark and Pikmi Pops characters on a subset of the Licensed Goods namely outerwear, sleepwear, underwear, socks, headwear, scarves, gloves and earmuffs (‘Licence 2’). Groves 1 exhibits two undated photographs of a childrens’ top showing its swing tag and label claimed to be from 2018 to 2020. While the photographs are undated, the label and swing tag bear the same information as the SHOPKINS label and swing tag except that the trade mark is PIKMI POPS, the copyright claim is 2015 and the website address is PIKMIPOPS.COM.

    ·     in 2022 to use the Trade Mark, the MAGIC MIXIES MIXLINGS trade mark and Magic Mixies Mixlings characters on the Licensed Goods (‘Licence 3’). Groves exhibits a number of undated photographs of children’s sleepwear, beanies, t-shirts, tops, leggings and gloves showing swing tags and labels claimed to be from 2023 and 2024. While the photographs are undated, the labels and swing tags bear the same information as the SHOPKINS label and swing tag except that the trade mark is MAGIC MIXIES MIXLINGS, the copyright claim is 2023 for all the Licensed Goods, other than a pair of children’s pyjamas which have a copyright claim of 2024, the website address is and different wording appears immediately following Under Licence By namely:

    © 2023[21] THE MOOSE GROUP

    Additionally, the swing label displays details of Caprice and for the legible labels in 2023 a price tag that states ‘LICENSED MIXIES PRINT TEE’ or ‘LICENSED MAGIC MIXIES BEANIE PNK’ or ‘LICENCED MIXIES GLOVES PNK’ and in 2024 the word LICENSED no longer appears with the description of the children’s pyjamas.

    [21] Or 2024.

21. Groves 1 make a number of claims supported by undated photographs and undated screenshots including:

    ·     the Licensed Goods have been advertised, promoted, offered for sale and sold in Kmart and BigW stores (both online and in store) in Australia since February 2023. The undated photographs are of children’s sleepwear, shorts, beanies, t shirts, gloves, pants, jumpers, tops, dresses and coats (‘Used Goods’) claimed to be from February/March and May 2023.

    ·     Opponent’s website at which I note displays the  trade mark but makes no reference to the Licensed Goods or the Used Goods. The only reference to the Trade Mark is in the headings ‘About Moose’ and ‘Moose Toys’.

22. Groves 1 attests that the Licensed Goods will be offered for sale in Target and Myer stores in 2024. No supporting evidence is provided.

23. Groves 1 declares that for the first and second quarter of the 2023 financial year, Caprice sold more than 50,000 units of girls’ apparel bearing the Trade Mark to Kmart and BigW stores, exhibiting royalty reports from Caprice to the Opponent which state the licensed trade mark is MAGIC MIXIES MIXLINGS.

24. Groves 1 states that the Licensed Goods under the Trade Mark have been advertised and promoted:

    ·on lnstagram exhibiting two undated screenshots relevantly showing:

    … (‘Post 1’).

    (‘Post 2’).

    ·an Instagram screenshot dated 10 November 2023 (after the Relevant Period) which refers to the new MAGIC MIXIES MIXLINGS activity range but not clothing.

    ·on t-shirts, headwear and footwear at a number of promotional toy and sporting events in Australia between 2019 and 2023.

    EIA

25. Williams states that the Applicant filed trade mark application 2276043 for the trade mark  in class 25 on 22 June 2022.

26. Williams annexes details of the trade marks SHOPKINS, PIKMI POPS and MAGIC MIXIES MIXLINGS obtained from the Australian Trade Mark Register which show the owner details as follows:

Trade mark	Registered owner
SHOPKINS	MOOSE CREATIVE PTY LTD (‘Moose Creative’)
PIKMI POPS	MOOSE CREATIVE MANAGEMENT PTY LTD (‘MCM’)
MAGIC MIXIES MIXLINGS	MOOSE CREATIVE MANAGEMENT PTY LTD

1. The remainder of Williams provides comments on Grove 1 that do not require summarising.

   EIR

2. Groves 2 claims that MCM and Moose Creative are affiliated entities with the Opponent in that they share common control and are both part of the Moose group of companies (which I note is not defined).

3. Groves 2 states that Menasche Stul beneficially owns more than 50% of, and is a director of, both Moose Creative and the Opponent, the companies thereby sharing common ownership and control, and that Moose Creative is authorised to use the Moose Trade Marks (which I note are not defined) pursuant to intercompany arrangements. Groves 2 exhibits copies of company extracts for Moose Creative and the Opponent from the Australian Securities & Investments Commission (‘ASIC’) database from which I note that:

   ·Moose Creative and the Opponent have the same 3 directors including Menasche Stul.

   ·the ultimate holding company of the Opponent is Mehold Pty Ltd, which beneficially owns all the shares of the Opponent. From my understanding of corporate ownership, Mehold Pty Ltd as sole shareholder is the owner of the Opponent.

   ·Moose Creative has two corporations which collectively own 100% of its shares.

   ·there is no evidence that Menasche Stul is a beneficial owner of any shares in the Opponent or more than 50% of the shares of Moose Creative. Therefore, contrary to Groves 2,[22] the Opponent and Moose Creative do not share common ownership.

   [22] Groves 2 [3] Exhibit I.

4. Groves 2 exhibits copies of the first page and Schedules of three licence agreements (together ‘Licence Agreements’) between the Opponent and Caprice, Licence 1 dated 26 April 2016, Licence 2 dated 21 May 2018 the Licence 3 dated 20 July 2022. The Trade Marks licensed are defined in Licence 1 as SHOPKINS, in Licence 2 as PIKMI POPS SURPRISE! and in Licence 3 as MAGIC MIXIES MIXLINGS. I note there is no reference to the licensing of the Trade Mark in any of the licences. However, there is reference to a copyright statement in each licence as follows:

   Licence 1

   Licence 2

   Licence 3

   (together ‘Copyright Statements’).

5. Groves 2 states that the undated photographs referred to in Groves 1[23] were taken on 13 and 20 February 2024, being after the Relevant Period.

   [23] Exhibits A, B and C.

6. Groves 2 exhibits copy of a purchase order from Caprice to Big W dated 16 December 2022 referencing the brand MAGIC MIXIES.

7. Groves 2 states that Moose Creative is the owner of the domain name moose.com.au and is authorised to use the Trade Mark pursuant to intercompany arrangements.

8. Groves 2 claims it is the Opponent who receives the royalties from Caprice’s sales of the Licensed Goods.

9. Grove 2 exhibits further copies of the Instagram screenshots referred to in Groves 1[24] which now have posted dates of 26 April 2023 and 17 February 2023.

   [24] Groves 1 [9] Exhibit G.

   Discussion and reasons

10. The SGP simply states ‘The Moose trade mark has been used and sold in Australia on clothing in particular children’s clothing under license from the owner’.

11. The Opponent’s written submissions concede that the Opponent has not used the Trade Mark in respect of footwear for children or slippers.

    Use of the Trade Mark

12. The Opponent submits that the Trade Mark has been used in the Relevant Period for all the Registered Goods save for footwear for children and slippers. This use has been by:

    ·Caprice which was licenced to use the Opponent’s various trade marks on various merchandise, including clothing, sleepwear, headgear and gloves throughout the Relevant Period, such goods being sold in K-Mart and Big W.

    ·the Opponent directly on its website and Instagram posts.

13. The Opponent submits that there are five forms of use of the Trade Mark – Moose, Moose Toys, , moose_toys and #moosetoys. Moose and used by Caprice as an authorised user and Moose Toys, moose_toys and #moosetoys used directly by the Opponent.

    Use by Caprice

14. The Opponent submits that the display of Moose in plain text as exemplified below on the back of clothing labels is use of the Trade Mark by Caprice under licence:

    (‘Copyright Label Statement’)

15. The Opponent further submits that the use by Caprice under licence of the word  appearing in stylised text above the image of a moose’s head as exemplified on swing tags of clothing below is use of the Trade Mark:

    (‘Swing Tag Use’) as firstly as it would be viewed as use of the standalone word Moose without the Moose device and as  is a stylised version of the Trade Mark, it is use which is an alteration that does not substantially affect identity for the purposes of s 7(1).

16. Further, if is considered as one mark, then this is still a use of the Trade Mark by Caprice with an alteration that does not substantially affect identity as the word Moose merely describes the image of a Moose, relying on E&J Gallo Winery v. Lion Nathan Australia Pty Ltd.[25]

    Is Caprice an authorised user of the Trade Mark?

    [25] [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ) (‘Gallo’).

17. The Opponent submits that:

    ·     the Copyright Label Statement and Swing Tag Use is use of the Trade Mark by the Opponent as Caprice is a mere conduit of the Opponent and has acted at the express direction of the Opponent in the Licence Agreements.

    ·     this use would be seen objectively as indicating a badge of origin to the consumer in line with the principles in Self Care IP Holdings Pty Ltd v. Allergan Australia Pty Ltd.[26]

    ·     the Opponent’s group of companies and Caprice are all acting together with a unity of purpose to promote and sell the Registered Goods that bear the Trade Mark on labels and swing tags.

    [26] [2023] HCA 8, [23] to [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

18. The Applicant submits that:

    ·     none of the Licence Agreements in Grove 2 mention the Trade Mark being licensed for use in relation to any goods. Licence 1 and License 2 refer to a licence to use the trade mark SHOPKINS and PIKMI POPS SURPRISE! respectively. Licence 3 refers to the trade mark MAGIC MIXIES MIXLINGS.[27]

    ·     the only reference to the Opponent is in the Copyright Statements. The name of the Opponent in the Copyright Statements and the use of the Copyright Label Statements is simply corporate identification of the company licensing Caprice to use its Licensed Marks and the copyright in relation to the Registered Goods. This is evident from usage of the name in association with the copyright symbol and the information that there is a licence. The Opponent’s name is not being used as a badge of origin of the Registered Goods which is consistent with the use of, for example, ‘LICENCED MIXIES GLOVES PNK’ on a swing tag.

    ·     the Opponent is not the owner of any of the Licenced Marks.

    ·     the Opponent has not provided evidence of any conditions being imposed by either it or any affiliated company in relation to the Copyright Label Statement and Swing Tag Use or evidence of the exercise of control over Caprice or in relation to the quality of goods its produces and sells. Nor has any evidence been provided showing any attempts at all by the Opponent to control the use made of the Copyright Label Statement and Swing Tag Use or the Licenced Marks in connection with the Registered Goods.

    ·     the Copyright Notices do not conform with the required notice in the Licence Agreements which is suggestive of a lack of control over usage of the Licenced Marks by the Opponent.

    ·     while there may be an argument for unity of purpose between the Opponent’s affiliated entities, this argument cannot extend to Caprice. The evidence does not establish any unity of purpose vis-à-vis Caprice. The relationship between the Opponent and Caprice is merely that of licensor and licensee in relation to the Licensed Marks to advance their separate commercial interests.

    [27] SHOPKINS, PIKMI POPS SURPRISE! And MAGIC MAXIES MIXLINGS will be referred to in this decision as the ‘Licensed Marks’.

19. In my view, it is clear that none of the Licence Agreements mention that the Trade Mark is licensed for use by Caprice in relation to any goods. Given this, consideration must now be given as to whether Caprice’s Copyright Label Statement and Swing Tag Use (together ‘Caprice’s Moose Use’) is under the control of the Opponent.

20. Subsections 8(3) and (4) provide for two scenarios where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression ‘under the control of’ is not limited to these two scenarios.

21. The Opponent does not claim that there was financial control over Caprice. Therefore, the Opponent will only have the benefit of the use of the Trade Mark by Caprice if there was another form of effective control by the Opponent over the use by Caprice such as quality control.

22. On the issue of control, Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks said:

    [T]he essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely registration of a registered user will not save the mark if there ceases to be the relevant connexion in the course of trade with the proprietor or the mark otherwise becomes deceptive.[28]

    [28] (1977) 137 CLR 670, 683.

23. Lodestar Anstalt v Campari America LLC (‘Lodestar’), [29] is a leading decision on authorised use and a number of points appear in Besanko J’s judgement (which had the support of the majority) namely:

    ·The trade mark must indicate a connection in the course of trade with the registered owner.[30]

    ·‘[T]he connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary.’[31]

    ·While the connection may be slight it does not mean the relevant control leading to that connection may be slight.[32]

    ·There must be actual control in relation to the use of the trade mark. While control involves questions of fact and degree, there must be control as a matter of substance.[33]

    ·Unlike the current position in the United Kingdom, a bare licence is insufficient under the Australian legislation.[34]

    ·Regardless of the form control might take – it is the exercise of control that matters not merely the right to do so.[35]

    [29] [2016] FCAFC 92 (‘Lodestar’).

    [30] Ibid [95].

    [31] Ibid.

    [32] Ibid.

    [33] Ibid [97]–[98].

    [34] Ibid [99].

    [35] Ibid [169].

24. The question is: has there been any control by the Opponent over Caprice’s Moose Use? The License Agreements are of little assistance as they do not authorise Caprice to use the trade marks MOOSE,  or  in any form. Further, the Licence Agreements do not contain quality control provisions or any other control provisions regarding Caprice’s Moose Use, nor do the Licence Agreements contain any provisions regarding the control by the Opponent over the quality of the Licensed Goods. Not only is there an absence of evidence of control provisions in the Licence Agreements vis-à-vis Caprice’s Moose Use, the Opponent has not provided any evidence that it has, in fact, controlled Caprice’s Moose Use or the quality of the Licensed Goods produced and sold by Caprice.

25. The Opponent provides three examples contained in the License Agreements which it submits support the argument that Caprice is a mere conduit of the Opponent: the express direction of the Copyright Notices, the Approvals Contact for the Licensee and the Moose Style Guide for the Licensed Marks (‘Control Provisions’). The Opponent submits that these Control Provisions show that the Opponent is in control of the product lines produced by Caprice and that Caprice is acting on directions by the Opponent and effectively ‘doing what it is told’.

26. The Applicant submits that Caprice cannot be a mere conduit or an agent of the Opponent as it is a licensee. The Applicant further submits that the provision in a licence of an approval contact name and contact details alone, without any evidence of any contact with the contact name, is not sufficient to show any control and the same applies to referencing a style guide, when there is no evidence of such a style guide. I agree with the Applicant that these examples are insufficient to show that the Opponent is in fact exercising control.

27. I also agree with the Applicant that the Copyright Notices and the use of the Copyright Label Statements is simply for the purpose of corporate identification of the company which is licensing Caprice to use its Licensed Marks (but not the Trade Mark) and the copyright in relation to the Licensed Goods.

28. Further, in my view, use of Moose or the Opponent’s name on the Copyright Label Statements is not use as a badge of origin of the Licensed Goods by the Opponent or Caprice. Upon examination of the Copyright Label Statements in the context of which they are used including the prominent use of the brands SHOPKINS, PIKMI POPS and MAGIC MIXIES MIXLINGS on labels and swing tags, assessing their nature and purpose, I am not satisfied that the Copyright Label Statements are used as a badge of origin to distinguish the Licensed Goods from the goods of others. Rather I am satisfied the Copyright Label Statements are used to convey copyright ownership to consumers and would not appear to consumers as possessing the character of a brand.

29. I also consider that the Copyright Label Statements do not conform with the required Copyright Notices in the Licence Agreements which support the Applicant’s claim that the Opponent was not in control or Caprice’s Moose Use including the Opponent’s corporate name or the name of the Opponent’s corporate group. There is no evidence that the Opponent directed Caprice to use any alternative form of the Copyright Notices.

30. On the Opponent’s submission that the common purpose of the Opponent’s group of companies and Caprice is that they are all acting together with unity of purpose to promote and sell the Licensed Goods that bear the Trade Mark on labels and swing tags, in my view, there is no evidence of common directorship where such a unity of purpose could be implied[36] between the Opponent’s group of companies and Caprice and in addition, there is nothing in the Opponent’s evidence to infer:

    ·     that Caprice is anything other than a licensee; or

    ·     that the Opponent and Caprice operated with a unity of purpose to maximise sales and to enhance the value of the Trade Mark.

    [36] Trident Seafoods Corp v Trident Foods Pty Ltd [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

31. In the end, I am not satisfied that the Opponent (or any member of its corporate group) was exercising any actual control in relation to Caprice’s Moose Use or the use of the Trade Mark and therefore I am not satisfied that Caprice was an authorised user of the Trade Mark. As such, the use by Caprice is not use by the Opponent of the Trade Mark for the Registered Goods during the Relevant Period.

    Use by the Opponent directly of Moose Toys, moose_toys and #moosetoys

32. The Opponent concedes in oral submissions that the use of the Trade Mark on t-shirts, and headwear and footwear at a number of promotional toy and sporting events in Australia[37] is not use of the Trade Mark in respect of the Registered Goods.

    [37] Groves 1 [10], Exhibit H.

33. The Opponent submits that each of the following are use by the Opponent of the Trade Mark:

    ·the use of moose_toys in the heading of one of the Instagram posts and as the Instagram account name.

    ·the use of #MooseToys being one of the hashtags at the bottom of that post.

    ·the use of Moose Toys, moose_toys and #moosetoys are uses of the Trade Mark with additions that do not substantially affect identity for the purposes of s.7(1) as the word toys is merely descriptive of the Opponent’s primary business and has no brand function, and basic symbols found on a keyboard like _ and # do not operate as cognitive cues to consumers, relying on Gallo[38] and Accor Australia & New Zealand Hospitality Pty Ltd v. Liv Pty Ltd.[39]

    [38] Gallo (n 25).

    [39] [2017] FCAFC 56, [213] (Greenwood, Besanko and Katzmann JJ).

34. The Applicant submits that:

    ·the trade mark used in the Instagram posts in relation to clothing is MAGIC MIXLINGS and not the Trade Mark and any reference to the Opponent is a passive historical snapshot of marketing of clothing branded under and by reference to a trade mark of an associated Moose company. It is not use of the Trade Mark ‘as a trade mark’ and nor is it use of the Trade Mark in relation to the Registered Goods.

    ·Post 2 was neither published nor caused to be published by the Opponent.

    ·regarding the Opponent’s submission that use of Moose Toys, moose_toys and #moosetoys are uses with additions that do not substantially affect identity, the present case is distinguishable from Gallo, where the court found the device was merely illustrative of the word. Here, the word ‘toys’ is not even remotely descriptive of the Registered Goods. The addition of the word ‘toys’ changes the identity of the mark being used, describing the business and the goods provided by the owner of the mark, namely toys.

35. The only reference in the evidence to Moose Toys is as a heading on a screenshot from the Opponent’s website, which screenshot makes no reference to the Licensed Goods, the Used Goods or indeed any of the Registered Goods. In my view, without more, this is not use of Moose Toys as a trade mark in respect of any of the Registered Goods.

36. I understand that a hashtag symbol is simply an identifier that is added to a social media post or message. In the setting in which the #moosetoys is presented on Post 1 and Post 2 along with other hashtags such as #MagicMixiesMixlings and #SuperHappy on Post 1 and #bigwaustralia, #whatsnew, #kidsapparel, #magicmixies and #perthphotographer on Post 2, I consider #moosetoys is likely to appear to the reader as nothing more than a metadata tag, namely a descriptive label to the digital file and not something possessing the character of a brand to indicate a connection in the course of trade between the Registered Goods and the Opponent. Therefore, in my view #moosetoys is not used as a trade mark in respect of any of the Registered Goods.

37. This leaves consideration of the Instagram user name moose_toys and its use in the heading of Post 1. I agree with the Applicant that the trade mark used in Post 1 in relation to clothing is MAGIC MIXLINGS and not the Trade Mark or moose_toys. Post 1 states ‘Discover the fashion world of Mixlings…’ and ‘…the new Magic Mixies Mixlings girls clothing range’. The brand of the clothing range is clearly Magic Mixies Mixlings and the brand promoted is Magic Mixies Mixlings. The user name moose_toys is not use of the Trade Mark in respect of the Registered Goods.

38. As I do not consider that there has been any use directly by the Opponent of the Trade Mark or Moose Toys, moose_toys and #moosetoys, I do not need to consider whether the use of Moose Toys, moose_toys or #moosetoys is use of the Trade Mark with additions that do not substantially affect identity. However, if I was required to consider this, I would be not be satisfied that the use of Moose Toys, moose_toys or #moosetoys is use of the Trade Mark with additions that do not substantially affect identity.

1. The relevant test is whether there is substantial identity between Moose Toys, moose_toys and #moosetoys (‘Moose Toys Marks’) and the Trade Mark. A side by side comparison reveals the obvious similarity that each of the Moose Toy Marks features the distinctive word ‘moose’ and the Trade Mark is the word Moose. The differences in the Moose Toys Marks to the Trade Mark is the addition of the word TOYS and for moose_toys and #moosetoys, the symbols _ and #. I do not however consider that the symbols _ and # would immediately strike the consumer’s eye and as such they do not constitute an essential feature in the Moose Toys Marks.

2. In coming to a decision on substantial identity, I take note of the words of the Full Court in Pham Global that ‘it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services’.[40]

   [40] Pham Global (n 20), [52].

3. If the Registered Goods the subject of this Removal Application were toys, then I would find little difficulty in concluding that the Moose Toys Marks were substantially identical to the Trade Mark as the toy element in the Moose Toys Marks would be completely descriptive of toys. However, the Registered Goods are not toys. The word TOYS does not describe any aspect, nature of characteristic of the Registered Goods. Therefore, in respect of the Registered Goods, I do not consider the use of Moose Toys, moose_toys and #moosetoys to be use of the Trade Mark with additions that do not substantially affect identity.

4. In conclusion, I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods during the Relevant Period.

   Obstacles to Use

5. For the sake of completeness, I note the Opponent has not provided evidence of any circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Mark for any of the Registered Goods. I accordingly find no case under s 100(3)(c) has been established.

6. I now turn to the Registrar’s discretion.

   Discretion

7. The question to be asked is whether it is reasonable not to remove the Trade Mark, even though the Opponent has not established use of the Trade Mark during the Relevant Period in respect of any of the Registered Goods. I must be positively satisfied that it is reasonable that the Trade Mark should not be removed.

8. The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[41]

   [41] Lodestar (n 29).

9. The discretion provided by this section is very broad. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the Court made the following observations regarding the discretion under s 101(3):

   The 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.[42]

   [42] (n 18), [153] (emphasis altered) (citations omitted).

10. The discretion factors broadly fall under 3 headings:

    • the interests of the owner of the trade mark;
    • the interests of the applicant for removal; and
    • the public interest.[43]

    [43] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33] (Hearing Officer Thompson).

11. The Opponent’s submissions in favour of the exercise of the discretion on the basis that:

    ·the Opponent has provided evidence of ongoing significant use and promotion of, and a reputation in, the Trade Mark both before, during and after the Relevant Date and it would likely cause significant detriment and consumer confusion if the Trade Mark were removed in whole or in part.

    ·the list of Licensed Goods in the License Agreements are broad foreshadowing use by Caprice in the future.

    ·the Opponent has an ongoing interest in the Trade Mark and has not abandoned the Trade Mark.

12. The Applicant argues against the exercise of the discretion on the basis that:

    ·removal of the Trade Mark does not affect the Opponent’s ability to continue licensing its various trade marks to Caprice or anyone else for use in relation to clothing or footwear.

    ·allowing the Opponent to retain registration in circumstances where it does not use the Trade Mark itself in relation to the Registered Goods, and cannot establish authorised use, allows it to maintain an inappropriate monopoly and excludes the ability of the Applicant to conduct business itself under and by reference to the name Moose.

    ·the Licensed Goods have been part of the licensed rights in the License Agreements for a number of years and yet, the Opponent has not evidenced use of any trade marks in relation to any goods other than the Used Goods.

13. I am not satisfied that the Opponent has an ongoing significant reputation in Australia in the Trade Mark in respect of the Registered Goods or indeed in respect of any other goods such as toys. The Opponent’s evidence does not support a significant reputation in the Trade Mark in respect of any goods. As a consequence, I consider the removal of the Trade Mark is unlikely to cause significant detriment and consumer confusion.

14. The list of Licensed Goods in the License Agreements is indeed broad and Caprice may indeed in the future use the Licensed Marks in respect of a range of goods beyond the Used Goods, but I have found that Caprice is not an authorised user of the Trade Mark, and therefore I am not satisfied that Caprice or the Opponent will use the Trade Mark in respect of the Registered Goods in the future.

15. Further, there is no evidence of any intention to expand the Opponent’s offerings beyond the Used Goods, other than an unsupported assertion that the Licensed Goods will be offered for sale in 2024.[44]

    [44] Groves 1 [6].

16. I agree with the Applicant that removal of the Trade Mark will not affect the Opponent’s ability to continue licensing its various trade marks to Caprice or anyone else for use in relation to clothing or footwear.

17. The Applicant’s private interests in this matter are clear. It has applied to register the trade mark .

18. There is also a public interest in maintaining the integrity (or ‘purity’) of the Register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:

    [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[45]

    [45] [2010] HCA 13, [22] (French CJ, Gummow, Heydon, Crennan and Bell JJ) (citations omitted).

19. On balance, in light of the above considerations, I am unpersuaded that the Opponent has provided justification to allow the retention of the Trade Mark on the Register for all of the Registered Goods. Accordingly, given the importance of the integrity of the Register, the Opponent’s reasons do not outweigh the public interest in removing an unused trade mark from the Register.

20. I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove the Registration.

    Decision

21. The Opponent has been unsuccessful in its opposition and the ground for removal under s 92(4)(b) of the Trade Mark has been established in respect of all the Registered Goods. I therefore direct that registration number 1895713 be removed from the Register for all the Registered Goods.

22. In the event of an appeal from this decision, the registration shall not be restricted until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the registration be dealt with as the court sees fit.

    Costs

23. Both parties have sought their costs. Costs generally follow the event, and I see no reason to depart from that principle in this matter. As such, I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Regulations.

    Anne Makrigiorgos
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    19 May 2025