Opposition by No Fear International Limited to application by Lorna Jane Pty Ltd to remove trade mark number 660199 (25) - FEARLESS - in the name of No Fear International Limited

[2021] ATMO 128

TRADE MARKS ACT 1995

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

Re:Opposition by No Fear International Limited to application by Lorna Jane Pty Ltd to remove trade mark number 660199 (25) - FEARLESS - in the name of No Fear International Limited

Delegate:

Louise Tuohy

Representation:

Opponent: Corrs Chambers Westgarth

Applicant: Ben Gardiner of Counsel instructed by HopgoodGanim

Decision:

2021 ATMO 128

Trade Marks Act 1995 (Cth) – section 96 opposition to s 92(4)(b) application for removal – no use in the relevant period – discretion not exercised – registration to be removed

Background

1. No Fear International Limited (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration Number:                   660199

   Trade Mark:  FEARLESS (‘Trade Mark’)

   Specification:  Class 25:  Wearing apparel, namely T-shirts, shirts, shorts, trousers, pants, hats, visors, shoes, sandals, and belts (‘Goods’)

2. Lorna Jane Pty Ltd (‘Removal Applicant’) applied on 23 July 2019 under the provisions of s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark in respect of all of the Goods.

3. On 30 September 2019 the Removal Opponent filed a Notice of Intention to Oppose the removal of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 30 October 2019. On 12 December 2019 the Removal Applicant filed a Notice of Intention to Defend the removal application.

4. The Removal Opponent filed the following declaration as evidence in support:

• Declaration of Natalie Clare, Managing Partner of Lane IP Limited for the Removal Opponent, made on 13 March 2020 with Annexures 1 to 3 (‘Clare declaration’).

1. The Removal Applicant did not file any evidence.

2. The Removal Applicant asked to be heard on the opposition by way of written submissions. The Removal Opponent informed the office that it did not plan to attend or file written submissions.  Ben Gardiner of Counsel made written submissions on behalf of the Removal Applicant.

3. The matter has been handed to me to decide in my capacity as a delegate of the Registrar of Trade Marks. What follows is my decision, with reasons, based upon the SGP, evidence and written submissions.  

Legal Framework

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. In the removal application the Removal Applicant nominated the ground under s 92(4)(b) of the Act.

2. Section 92(4)(b) of the Act provides:

   92  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:

   […]

   (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.

3. For the purposes of s 92(4)(b) the relevant period is the three year period ending on 23 June 2019 (‘Relevant Period’).

4. Pursuant to s 100 of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent can rebut that allegation by establishing that it used the Trade Mark in good faith in relation to the Goods in the Relevant Period.[1]

   [1] 100(3) of the Act.

5. In Woolly Bull Enterprises Pty Ltd v Reynolds,[2] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. 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.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[5]

   [2] [2001] FCA 261, [16].

   [3] Ibid [17].

   [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

   [5] (1962) RPC 1, 7.

6. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[6]

   [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

7. In accordance with s 101 of the Act, if the grounds for removal are established, I may decide to remove the Trade Mark from the Register in respect of any or all of the Goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

Discussion

1. In the SGP the Removal Opponent particularises its rebuttal of the s 92(4)(b) ground as follows:

The Opponent has used the Opposed Mark in Australia in good faith within the Relevant Period in respect of the Specified Goods, including t-shirts, dresses and sweaters.

To the extent – if any – that the Opponent has not used the Opposed Mark in Australia within the Relevant Period in respect of any of the Specified Goods, the Registrar should exercise her discretion to allow TM 660199 to remain on the Register on the basis that:

(a) The Opponent used the Opposed Mark in Australia in good faith in respect of the Specified Goods outside the Relevant Period;

(b) The Opponent used the Opposed Mark in Australia in good faith in respect of similar or related goods or services, either within or outside the Relevant Period;

(c) The Opposed Mark enjoys a significant reputation amongst the relevant public in Australia which arises from the Opponent’s use of the Opposed Mark, and therefore any unauthorised use of an identical or similar mark by another person in relation to any of the Specified Goods, or similar/closely related goods and services, is likely to cause confusion.

1. In confining the evidence to documents dated within the Relevant Period, the Clare declaration provides screenshots from an internet archiving service the Wayback Machine showing use of the words FEARLESS ILLUSTRATION in relation to the following products:

   • Annexure 1 are copies of archived web pages from the website The extract dated 28 June 2016 shows use of the words FEARLESS ILLUSTRATION in relation to men’s sweaters and ladies skirts. The extract dated 29 July 2016 shows use of the words FEARLESS ILLUSTRATION in relation to men’s sweaters and ladies skirts.

• Annexure 2 are copies of archived web pages from the website The extract dated 27 June 2017 shows use of the words FEARLESS ILLUSTRATION in relation to a ladies chiffon shirt, skater dress, slouchy t-shirt, and a men’s AOP t-shirt. The extract dated 26 November 2017 shows use of the words FEARLESS ILLUSTRATION in relation to a ladies skater dress, chiffon shirt, sweater, tea dress, tank top and slouchy t-shirt.

1. Both the websites listed above are under the domain name ‘sportsdirect’. The extracts from    are from the ‘sportsdirect’ United Kingdom website and the prices are listed in pounds sterling. In Ward Group Pty Ltd v Brodie & Stone Plc, Merkel J held:

   …use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.[7]

   [7] [2005] FCA 471, [43].

2. ​​​​​​There is no evidence before me to conclude that the use of this website was directed or targeted at Australian consumers. Therefore, I consider that evidence of use of the Trade Mark from this website does not show the use of the Trade Mark in Australia.

3. The archived pages from are from the ‘au.sportsdirect.com’ website which specifically targets Australian consumers. However, there is no evidence which shows that this website is owned by or even connected to the Removal Opponent. The only evidence that the goods appearing on this website might be those of the Removal Opponent is the following assertion from Ms Clare:

   The primary sales channel through which [the Removal Opponent] sold [the Goods] to customers located in Australia during the Non-use period was and still are the websites…

4. There is simply no evidence to support this claim. The fact that Ms Clare is not an officer of the Removal Opponent is the first problem. It seems unlikely that managing a trade mark portfolio on behalf of the Removal Opponent would entail engaging with its supply chains. Corroborating documentary evidence, such as invoices to the operator of that website (or at least to some intermediary) ought to form part of the business records of the Removal Opponent. Nothing of this nature was provided in evidence. That is, the Removal Opponent has not attempted to establish that these goods on this website actually came from it. As such, on balance, I am not satisfied that the Removal Opponent has used the Trade Mark for the Goods in the Relevant Period.

5. Furthermore, the Removal Opponent does not claim nor does the evidence raise matters which would be regarded as obstacles to use of the Trade Mark in the Relevant Period pursuant to s 100(3)(c) of the Act.

6. The ground for removal under s 92(4)(b) of the Act has been established in relation to all of the Goods.

7. In the SGP the Removal Opponent indicated that it seeks to rely on the exercise of the discretion provided by s 101(3) of the Act.

Registrar’s Discretion

1. Section 101(3) of the Act provides:

   101  Determination of opposed application—general

   […]

   (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.

   […]

2. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[8]

   [8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

3. The question to be asked is whether it is reasonable not to remove the Trade Mark in respect of the Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to the Goods.[9]

   [9] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

4. In the present case, there is no evidence that the Removal Opponent has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia for the Goods. Moreover, there is no evidence that the Trade Mark enjoyed a significant reputation in Australia as contended in the SGP. In the absence of any evidence or submissions in relation to why I should exercise the discretion in the Removal Opponent’s favour, I am not satisfied that the removal of the Trade Mark for the Goods would result in consumer confusion or practically impact on the interests of the Removal Opponent in any way. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in relation to the Goods.

Decision

1. I direct that trade mark registration 660199 be removed from the Register in respect of all of the Goods, one month from the date of this decision. In the event of an appeal, I direct that the Trade Mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.

Costs

1. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

26 October 2021