Oppositions by Symphony Holdings Limited to applications under section 92 of the Trade Marks Act 1995 (Cth) by Skins IP Limited for removal of twenty three trade marks registered in the name Symphony Holdings Limited.

[2022] ATMO 29

TRADE MARKS ACT 1995

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

Re:Oppositions by Symphony Holdings Limited to applications under section 92 of the Trade Marks Act 1995 (Cth) by Skins IP Limited for removal of twenty three trade marks registered in the name Symphony Holdings Limited.

Delegate:	Nicholas Barbey
Representation:	Opponent: Edward Thompson of counsel instructed by Gorton IP Applicant: Duncan Cotterill Lawyers
Decision:	2022 ATMO 29 Trade Marks Act 1995 (Cth) – applications under s 92(4)(b) – complete removal sought in respect of each registration – s 92(4)(b) established in respect of some registrations – discretion exercised in respect of some registrations – certain registrations to be retained on the Register and certain others to be removed

Background

1. Symphony Holdings Limited (‘Opponent’) is the registered owner of the following twenty three Australian trade mark registrations (‘Registrations’):[1]

   [1] Relevant details of each trade mark registration are listed in Annexure A to this decision.

Number	Trade Mark	Class(es)	Short Title	Non-use application filing date
877680	10, 25, 35	7680 Mark	23 August 2019
877681	10, 25, 35	7681 Mark	23 August 2019
877682	10, 25, 35	7682 Mark	23 August 2019
878063	10, 25, 35	8063 Mark	23 August 2019
878064	10, 25, 35	8064 Mark	23 August 2019
878065	10, 25, 35	8065 Mark	23 August 2019
995860	10	5860 Mark	23 August 2019
1030635	Skins BioAcceleration Technology	10, 25	0635 Mark	23 August 2019
1106064	10, 25, 28, 35	6064 Mark	23 August 2019
1298468	10, 25, 28, 35	8468 Mark	23 August 2019
1298469	10, 25, 28, 35	8469 Mark	23 August 2019
1298470	10, 25, 28, 35	8470 Mark	23 August 2019
1298471	10, 25, 28, 35	8471 Mark	23 August 2019
1298472	10, 25, 28, 35	8472 Mark	23 August 2019
1298473	10, 25, 28, 35	8473 Mark	23 August 2019
1337622	18	7622 Mark	23 August 2019
1407020	TEAM SKINS	10, 18, 25, 35	7020 Mark	23 August 2019
1407021	10, 18, 25, 35	7021 Mark	23 August 2019
1607511	10, 18, 35, 41	7511 Mark	23 August 2019
1614587	41	4587 Mark	23 August 2019
1671034	SKINS.NET	10, 18, 25, 35, 41	1034 Mark	5 February 2020
1671043	10, 18, 25, 35	1043 Mark	5 February 2020
1671235	9	1235 Mark	5 February 2020

1. On 23 August 2019, Skins IP Limited (‘Applicant’) filed non-use applications against twenty of the Registrations[2] based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking complete removal of each trade mark from the Australian Register of Trade Marks (‘Register’). On 5 February 2020, the Applicant filed a further three non-use applications against the remainder of the Registrations[3] based on s 92(4)(b) of the Act. Again, the Applicant sought complete removal of each trade mark from the Register.

   [2] See 7680, 7681, 7682, 8063, 8064, 8065, 5860, 0635, 6064, 8468, 8469, 8470, 8471, 8472, 8473, 7622, 7020, 7021,7511 and 4587 Marks.

   [3] See 1034, 1043 and 1235 Marks.

2. The Opponent filed notices of intention to oppose each non-use application followed by Statements of Grounds and Particulars (‘SGP’). In turn, the Applicant filed notices of intention to defend each non-use application.

3. The evidence stages followed and only the Opponent filed evidence. This evidence consisted of twenty separate declarations made by Benjamin Fitzmaurice, Chief Operating Officer (‘COO’) of the SKINS division of the Opponent.[4] Separate declarations made by Michelle Gorton, lawyer for the Opponent, were also filed in respect of the 5860 and 6064 Marks.

   [4] Relevant details of each declaration filed are reproduced in Annexure B to this decision.

4. The parties requested to be heard and the Registrar of Trade Marks (‘Registrar’) arranged for all twenty three non-use applications to be heard in a single hearing. The Opponent filed submissions on 16 November 2021 (‘Opponent’s Submissions’) and the Applicant filed submissions on 23 November 2021 (‘Applicant’s Submissions’). As a delegate of the Registrar, I heard the matter by video conference on 30 November 2021. Edward Thompson of counsel instructed by Michelle Gorton of Gorton IP appeared on the Opponent’s behalf. The Applicant did not attend the hearing.

   The relevant provision

5. Section 92 of the Act relevantly provides:

   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.

6. Pursuant to s 93(2) of the Act,[5] a non-use application may not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark. I confirm that each non-use application filed complies with this requirement.

   [5] See Act s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3). The amended s 93(2) applies to trade marks filed from 24 February 2019 onwards.

   Relevant period and onus

7. There are two relevant periods in this matter. The first relevant period is the three-year period ending on 23 July 2019 in which the Opponent must establish use of twenty of the Registrations in good faith. The second relevant period is the three-year period ending on 5 January 2020 in which the Opponent must establish use of three of the Registrations in good faith. The two relevant periods overlap by approximately 2.5 years and nothing turns on the different periods. As such, I will refer to these periods as the ‘Relevant Period’ for the remainder of this decision.

8. The onus rests with the Opponent to rebut the non-use allegations made under s 92(4)(b) of the Act.[6] Section 101 of the Act provides the Registrar with the discretion to remove each of the Registrations from the Register in respect of any, or all, of their respective goods and/or services. If satisfied that it is reasonable to do so, the Registrar may decline to remove any of the Registrations from the Register even if the grounds on which the non-use application was made have been established.[7]

   [6] Act s 100(1)(c).

   [7] Act s 101(3).

9. I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[8]

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

   Evidence

10. The Opponent filed twenty separate declarations made by Benjamin Fitzmaurice as part of its evidence in support. Unsurprisingly, there is a degree of repetition in the content of each declaration. In the interests of brevity, the twenty declarations will be collectively referred to as a single declaration (‘Fitzmaurice Declaration’). Where necessary, a specific Fitzmaurice declaration will be identified by reference to the short title of the relevant trade mark as listed at [1] of this decision

11. Mr Fitzmaurice is the COO of the SKINS division of the Opponent and the former COO of Skins International Trading AG (‘Prior Registrant’). Through these roles, Mr Fitzmaurice has worked with ‘the SKINS brand’ for over a decade. By way of background, Mr Fitzmaurice explains that the Prior Registrant filed for bankruptcy in January 2019 and subsequently sold the Registrations to the Opponent under IP Sales Agreements in July and September 2019.

12. According to the Fitzmaurice Declaration, the Prior Registrant ‘was in the business of manufacturing, distributing and selling compression garments, therapeutic compression garments, medical garments and sports apparel and clothing’. Mr Fitzmaurice states that the SKINS brand was created in 1996 and products bearing this brand were subsequently sold in Australia in 1998. The brand was initially used in relation to compression garments and sportwear products. Mr Fitzmaurice declares that the Prior Registrant sold products bearing one or more of the Registrations directly to Australian consumers from the website accessible at (‘Website’). To support this, reference is made to a Google Analytics summary for the Website which reveals that between 1 January 2016 to 31 December 2018 there were over a million user interactions with the Website that originated from Australia.[9]

    [9] See Annexure BF-13 to the Fitzmaurice declaration made in respect of the 1034 Mark.

13. The Fitzmaurice Declaration asserts that products bearing one or more of the Registrations were also sold by Australian retailers during the Relevant Period and have continued to be sold thereafter. These retailers include national chains such as Amart, Anaconda, Paul’s Warehouse, Sportco and Rebel. To this end, reference is made to a letter dated 4 May 2020 from Rebel’s Business Manager for apparel which confirms that ‘compression garments and accessories’ bearing the 5860 and 6064 Marks were sold by Rebel during the Relevant Period (‘Rebel Letter’). Mr Fitzmaurice states that between January 2018 to July 2019 True Alliance Brands Pty Ltd also distributed clothing products bearing one or more of the Registrations in Australia.

14. The Fitzmaurice Declaration also annexes correspondence sent by Jaimie Fuller, the former Chief Executive Officer (‘CEO’) of the Prior Registrant, to an employee of the Opponent on 25 November 2019 (‘Fuller Email’). Mr Fuller informed the Opponent’s employee that he is the registrant of the Website and has ‘approximately 6 terabytes of data’ relating to the digital records and assets of the Prior Registrant’s business. This data is said to include financial, contractual, product and marketing information regarding the Registrations. The correspondence concludes with Mr Fuller remarking that the Opponent should contact him if it is ‘interested in a discussion on one or both of these’ items. 

15. Annexed to the Fitzmaurice Declaration is a declaration made by Michelle Gorton on 3 September 2018 (‘Gorton 1’) which was originally filed as evidence in support of an unrelated opposition matter.[10] Gorton 1 recounts the origins of the SKINS brand and broadly mirrors the timeline disclosed in the Fitzmaurice Declaration. In Ms Gorton’s view, the SKINS brand has ‘a strong reputation in compression garments and technology’ and is ‘well-known in the Australian marketplace’.[11]

    [10] See Australian trade mark application number 1866229 for the word ‘TECHSKIN’ in respect of class 10 goods. The notice of opposition was filed by the Prior Registrant and the trade mark application was subsequently withdrawn on 10 December 2018.

    [11] Gorton 1, [41].

16. Gorton 1 states that the Prior Registrant is ‘the applicant and owner of many trade marks including the word SKINS around the world’.[12] Ms Gorton notes that products bearing one or more of the Registrations may be purchased by Australian consumers via the Website. The financial figures disclosed indicate that the sales of goods bearing one or more of the Registrations in Australia between 2016 to 2018 were, by any reasonable measure, commercially significant.[13] Likewise, the Prior Registrant’s marketing expenditure in Australia for the 2016 and 2017 financial years was substantial.

    [12] Ibid [12].

    [13] Ibid [24].

17. Ms Gorton explains that an integral component of the Prior Registrant’s marketing of the SKINS brand is via partnerships with elite sporting teams and individuals. This includes supplying clothing to national sporting teams and high profile sports people who in turn promote the SKINS brand to a global audience. Examples of such partnerships include the Prior Registrant’s sponsorship of the Australian rugby union team, the Wallabies, as well as the sponsorship of former Australian rugby league player, Johnathan Thurston.

18. A separate declaration by Michelle Gorton made on 5 May 2020 (‘Gorton 2’) was filed in relation to the 5860 Mark. Gorton 2 states that ‘Statewide Sports’ have been selling goods in Australia bearing the 5860 Mark since 2017. Annexed to Gorton 2 is correspondence from the director of Robree Investments Pty Ltd, the entity which trades as ‘Statewide Sports’, confirming that sales of goods bearing the 5860 Mark, among others, had been made in Australia as well as copies of invoices dated between 2017 to 2019. Meanwhile, a declaration by Michelle Gorton made on 11 May 2020 (‘Gorton 3’) was also filed in respect of the 6064 Mark. The content of Gorton 3 essentially mirrors Gorton 2 save for the fact that it discusses the 6064 Mark and its relevant goods and services.

    Discussion

19. The principal issue for determination is whether the Opponent (or an authorised user) has used the Registrations in Australia in relation to their respective goods and/or services during the Relevant Period. If the evidence establishes that the Opponent (or an authorised user) has, the non-use allegations will be rebutted and the Registrations will remain registered. If the evidence fails to establish use of the Registrations for all of their respective goods and/or services, consideration will then turn to whether it is reasonable to invoke the Registrar’s discretion to preserve the relevant registration(s) for any goods or services that the Registrations have not been used in relation to.

20. The evidence of use required to be demonstrated is ‘use as a trade mark’. That is, the Opponent must show that the Registrations have been used as a badge of origin[14] and not merely in a descriptive manner. The extent of use required is not onerous and a ‘relatively small amount of use’ may be sufficient to rebut a non-use application.[15] Potentially, a single bona fide use of a trade mark during the relevant period may be sufficient to prevent removal.[16] However, if reliance is placed on a solitary example of use, it should be established by ‘overwhelmingly convincing proof’.[17]

    Use of the Registrations during the Relevant Period

    [14] See Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ) wherein it was observed that ‘[u]se “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods’.

    [15] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).

    [16] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [17] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

21. From the outset the Opponent concedes that sixteen of the twenty three trade marks which comprise the Registrations have not been used by the Opponent during the Relevant Period.[18] These trade marks are the 7680, 7681, 7682, 8063, 8064, 8065, 0635, 8468, 8469, 8470, 8471, 8472, 8473, 1043, 7511 and 1235 Marks (collectively ‘Conceded Marks’). The Opponent has not advanced any circumstances that were an obstacle to the use of any of the Conceded Marks during the Relevant Period.[19] Instead, it has requested that the Registrar’s discretion be exercised to preserve the registration of the Conceded Marks.[20] This request will be addressed later in the decision.

    [18] Opponent’s Submissions, [23], [34] and [37]–[38].

    [19] See Act s 100(3)(c).

    [20] Opponent’s Submissions, [38].

22. I will now consider the remaining Registrations which the Opponent contends have been used in Australia during the Relevant Period.

    5860 Mark

23. The SGP filed in respect of the 5860 Mark claims that the Prior Registrant used the 5860 Mark in the course of trade in Australia during the Relevant Period. This use ‘included applying the [5860] Mark to the Class 10 goods in respect of which the [5860] Mark is registered’. The 5860 Mark is registered for the following goods: ‘compression garments; therapeutic compression garments; medical garments; none of the foregoing being made of skin of plant or animal origin’.

24. Broadly speaking, the evidence filed in support of the 5860 Mark contains numerous examples of different trade marks incorporating the word ‘SKINS’. Many of these are undated, fall outside the Relevant Period or clearly demonstrate use of the 5860 Mark with additions or alterations which substantially affect its identity.[21] Nevertheless, the evidence reveals the following example of the 5860 Mark being used during the Relevant Period in relation to compression garments:[22]

    [21] Act s 103(a).

    [22] See Annexure BF-4 to the Fitzmaurice declaration made in respect of the 5860 Mark.

25. The Applicant asserts that this evidence is deficient because the screenshot does not establish where Rebel Sport sourced the products from. Likewise, it is critical of the Rebel Letter claiming that a) it is inadmissible ‘on the basis it is hearsay’ and b) the document ‘does not advise where Rebel Sport sourced the product from or that any use on its part was authorised by the appropriate party’.[23] These criticisms are not persuasive. First, the Registrar is not bound by the rules of evidence[24] and the Rebel Letter may be considered given it was properly filed as evidence in this matter. Second, the bolded subject line of the Rebel Letter particularises the use of the 5860 and 6064 Marks as being by the Prior Registrant. That is, Rebel confirmed the products were sold in their stores during the Relevant Period and identified the goods as having originated from the Prior Registrant. In my view, the Rebel Letter corroborates that the products appearing in the screenshot were manufactured by the Prior Registrant. Consequently, I am satisfied that this evidence establishes use of the 5860 Mark by the Prior Registrant in relation to compression garments in Australia during the Relevant Period.

    [23] Applicant’s Submissions, Annexure B, 5–6.

    [24] Trade Mark Regulations 1995 (Cth) reg 21.15(4) which states that the Registrar ‘is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’.

    6064 Mark

26. The SGP filed in respect of the 6064 Mark asserts that the Prior Registrant used it in the course of trade in Australia during the Relevant Period. This use ‘included applying the [6064] Mark to the Classes 10, 25 and 28 goods and using the [6064] Mark for the Class 35 services’. The goods for which the 6064 Mark is registered include compression garments, clothing, footwear, headgear, padded clothing and sports guards. The 6064 Mark is also registered for various retail, wholesale and mail order services relating to such goods.   

27. The Opponent’s Submissions concede that the 6064 Mark had not been used in relation to ‘footwear’, ‘pyjamas, dressing gowns, bath robes’, ‘swimwear’, ‘wetsuits’, ‘wristbands’, ‘bandannas and headbands’ and retail services in respect of such goods.[25] Yet, the Opponent maintains that the 6064 Mark had been used during the Relevant Period in respect of all of the remaining goods and services for which it is registered.

    [25] Opponent’s Submissions, [27].

28. To establish use of the 6064 Mark, a significant amount of the evidence consists of archived screenshots of the Website. The Applicant submits that this evidence is flawed. Specifically, it alleges that the Fuller Email indicates that Mr Fuller, not the Prior Registrant or the Opponent, is the owner of the Website. In this context, the Applicant claims that there is ‘no evidence that any use of the Trade Marks on that site was use by (or use authorised by) the Prior Registrant or the Opponent’.[26] Further, in the Applicant’s opinion, the archived screenshots of the Website do not establish that the advertised goods were available for delivery to Australian consumers or that the 6064 Mark was used in Australia.[27]

    [26] Applicant’s Submissions, [48].

    [27] Ibid.

1. Conversely, the Opponent submits that Mr Fitzmaurice, as the former COO of the Prior Registrant and current COO of the Opponent, is well placed to give evidence as to how the Registrations were used during the Relevant Period.[28] Mr Fitzmaurice’s evidence is that the Prior Registrant sold products bearing trade marks incorporating the word ‘SKINS’ directly from the Website.[29] At the hearing, Mr Thompson highlighted that the Fuller Email does not speak to the ownership of the Website throughout the Relevant Period. Rather, at its highest, it discusses the Website’s ownership as at 25 November 2019. Mr Thompson opined that, even if it is accepted that Mr Fuller owned the Website, it can be readily inferred that Mr Fuller and the Prior Registrant operated with a unity of purpose[30] given his position as its CEO. On whether the Website demonstrates trade mark use in Australia, the Opponent states that the file path of the archived screenshots denotes Australia because it contains ‘/au’ immediately after in the Uniform Resource Locator (‘URL’). At the hearing, Mr Thompson emphasised that the prices displayed in some of the screenshots were specified as being in Australian dollars and this demonstrates that the Website was targeted at Australian consumers.

   [28] Opponent’s Submissions, [6].

   [29] Fitzmaurice declaration made in respect of the 1034 Mark, [11].

   [30] See Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [45] (Reeves, Jagot and Rangiah JJ).

2. In my assessment, it is more probable than not that the use of the Registrations demonstrated by the screenshots of the Website was that of Prior Registrant. The evidence filed contains screenshots of the Website that display a copyright notice which attributes the Prior Registrant as being the relevant copyright owner.[31] Although these screenshots fall slightly outside of the Relevant Period, the information disclosed is nevertheless consistent with Mr Fitzmaurice’s statement that the Website was operated and used by the Prior Registrant. Furthermore, I am satisfied that the screenshots of the Website amount to use of the Registrations within Australia. The evidence filed demonstrates that the Website was specifically ‘directed or targeted’[32] at Australian consumers. For example, screenshots of the Website during the Relevant Period displayed the price of the goods in ‘AUD’ and the Website is shown to have the functionality of choosing the shopping location as being ‘Australia’.[33] This specific targeting of Australian consumers is further supported, albeit indirectly, by the Google Analytics summary which shows that a significant number of user interactions with the Website originated from Australia during the Relevant Period.[34]

   [31] See Annexure 7A to Gorton 1.

   [32] Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471, [43] (Merkel J).

   [33] See Annexures BF-3 to BF-5 of the Fitzmaurice declaration made in respect of the 1034 Mark.

   [34] See Annexure BF-13 to Fitzmaurice declaration made in respect of the 1034 Mark.

3. Accordingly, I am satisfied that the evidence demonstrates use of the 6064 Mark during the Relevant Period in relation to compression garments, t-shirts, tights, shorts and undergarments.[35]

   [35] See Annexures BF-3 to BF-7 and BF-11 to the Fitzmaurice declaration made in respect of the 6064 Mark.

4. However, the evidence does not establish use of the 6064 Mark in relation to the broader range of goods and services for which it is registered.[36] It is true that the evidence filed contains examples of the component parts of the 6064 Mark (reproduced below) being used separately in relation to a wider range of goods and services:[37]

[36] Similar to the evidence filed in respect of the 5860 Mark, the evidence filed in support of the 6064 Mark contains numerous examples of use which are either undated or clearly do not fall within the Relevant Period.

[37] See Annexures BF-3 to BF-7 of the Fitzmaurice declaration made in respect of the 1034 Mark.

1. Pursuant to s 100(3)(a) of the Act, use of either trade mark will constitute use of the 6064 Mark if they are determined to contain additions or alterations which do not substantially affect its identity. The expression ‘additions or alterations’, which appears in ss 7 and 100 of the Act, has been the subject of judicial consideration. In Sports Warehouse Inc v Fry Consulting Pty Ltd, Kenny J observed:

   Windeyer J’s statement of the test for substantial identity (see s 44 of the Act) in Shell Co (Aust) Ltd v Link Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 is also a guide as to whether “a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark” (s 7(1)): … Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[38]

   [38] [2010] FCA 664, [154] (emphasis added).

2. For reference, the 6064 Mark and trade marks listed at [33] of this decision are reproduced side by side:

A

B

1. In my assessment, the 6064 Mark is not substantially identical to either trade mark. When the 6064 Mark is compared side by side to trade mark ‘A’, each trade mark shares the common word ‘SKINS’ depicted in the same stylised font. Clearly, the 6064 Mark also features a prominent ‘S’ device whereas trade mark ‘A’ does not contain any device element. The ‘S’ device is not an illustration of the word ‘SKINS’[39] nor is it descriptive of the goods and services for which the 6064 Mark is registered. As such, the ‘S’ device forms an essential feature of the 6064 Mark.  Consequently, when regard is given to the essential features of the 6064 Mark and trade mark ‘A’, a total impression of dissimilarity emerges from the comparison. The same conclusion follows with respect to a side by side comparison of the 6064 Mark with trade mark ‘B’ given the representation of the latter does not contain the word ‘SKINS’ in a stylised font.

   [39] Cf E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ).

2. Accordingly, use of either component of the 6064 Mark in isolation does not constitute use of the 6064 Mark with additions or alterations not substantially affecting its identity. As such, use made in respect of the broader range goods and services under each component part of the 6064 Mark cannot be relied upon by the Opponent to rebut the non-use allegation.

   7622 Mark

3. The SGP filed in respect of the 7622 Mark asserts that the Prior Registrant used it ‘in the course of trade in Australia from at least 2009 and including during the alleged non-use period’. This use ‘included applying the [7622] Mark to the goods covered by the Class 18 Goods in respect of which the [7622] Mark is registered’.

4. The 7622 Mark is registered in respect of various bags, wallets, purses, luggage and umbrellas in class 18. The Opponent’s Submissions assert that the 7622 Mark has been used during the Relevant Period in relation to all of the registered class 18 goods except for the following goods: ‘handbags’, ‘purses’, ‘wallets’, ‘key cases’ and ‘umbrellas’.[40]

   [40] Opponent’s Submissions, [30].

5. The evidence filed to establish use of the 7622 Mark primarily consists of archived screenshots of the Website.[41] In contrast to the screenshots of the 6064 Mark, the archived screenshots relied on exhibit the United States version of the Website. This is evident in the fact that the archived screenshots display the title ‘SKINS United States’ and the file path of the screenshots contain ‘/usa’ immediately after in the URL. Furthermore, the price of the products in the screenshots are displayed in USD. For these reasons, it is clear that this evidence does not demonstrate use of the 7622 Mark in Australia given the screenshots of the Website are directed at consumers in the United States. Thus, this evidence does not advance the Opponent’s case.

   [41] See Annexures BF-3 to BF-5 of the Fitzmaurice declaration made in respect of the 7622 Mark.

6. The Opponent also relied on two social media posts of the 7622 Mark in relation to bags:[42]

   [42] See Annexure BF-6 to the Fitzmaurice declaration made in respect of the 7622 Mark.

Social media post ‘A’ Social media post ‘B’

1. In my view, neither social media post establishes that the 7622 Mark was used by the Prior Registrant in relation the class 18 goods during the Relevant Period. The photograph in social media post ‘A’ does not show any visible use of the 7622 Mark and therefore does not assist the Opponent. Meanwhile, the photograph in social media post ‘B’ consists of a promotional giveaway display of ‘1 x Sports Duffle’, among other things, bearing the 7622 Mark. This post does not in itself provide a cogent basis to infer that the 7622 Mark was used in the course of trade by the Prior Registrant, as opposed to being a one-off promotional item used as part of a giveaway. Simply put, social media post ‘B’ does not amount to ‘overwhelmingly convincing proof’ that the 7622 Mark was in fact used by the Prior Registrant in the course of trade in Australia in relation to bags.

2. Finally, the Opponent’s Submissions referred to correspondence from ‘Statewide Sports’[43] which claims it sold products (including bags) bearing, among others, the 5860 and 7622 Marks in Australia during the Relevant Period. However, no contextual evidence has been provided other than various invoices which refer exclusively to clothing. This evidence is circumstantial at best given it does not confirm that the 7622 Mark was actually used in relation to bags as the use could, for example, just be on compression garments and sportswear. Put another way, the ambiguous manner in which the correspondence has been drafted coupled with the lack of supplementary evidence does not provide a sufficient basis to infer that the 7622 Mark has been used in relation to bags in Australia during the Relevant Period.

   [43] See Annexure MG-1 to Gorton 3.

3. Therefore, the evidence fails to establish that the 7622 Mark was used by the Prior Registrant in relation to any class 18 goods in Australia during the Relevant Period.

   4587 Mark

4. The SGP filed in respect of the 4587 Mark contends that it was used by the Prior Registrant ‘in the course of trade in Australia from at least 2013 and including during the alleged non-use period’. The SGP states that the alleged use was in respect of all the services for which the 4587 Mark is registered.

5. The 4587 Mark is registered in respect of diverse range of class 41 services including education, sporting activities, entertainment, training, providing online electronic publications and videos. The Opponent’s Submissions concede that the 4587 Mark has not been used in relation to ‘organisation of sporting events’, ‘organising charitable fundraising events’ and ‘production of sporting events’.[44] However, the Opponent maintains that the 4587 Mark has been used in relation to the remaining class 41 services.

   [44] Opponent’s Submissions, [31].

6. The evidence relied on to establish use of the 4587 Mark consists of a blog post by a London based third party, a blog post about Johnathan Thurston and an undated article published on the Website together with archived screenshots of the ‘Citizens of Sport’ and ‘Water-Cooler’ blogs which are also published on the Website.[45] A common theme with this evidence is that the 4587 Mark does not appear in any of the material adduced. This evidence does not advance the Opponent’s position because it fails to demonstrate use of the 4587 Mark. It follows that the evidence filed does not establish that the 4587 Mark was used in relation to any class 41 services in Australia during the Relevant Period.

   [45] See Annexure BF-2 to the Fitzmaurice declaration made in respect of the 4587 Mark.

   1034 Mark

7. The SGP filed in respect of the 1034 Mark states that it was used by the Prior Registrant ‘in the course of trade in Australia from at least 2009 (its predecessor in title prior to this date) and including during the alleged non-use period’. The SGP states that the alleged use was in respect of all the goods and services for which the 1034 Mark is registered.

8. The Opponent’s Submissions modified the position adopted in the SGP and acknowledged that the 1034 Mark had not been used in relation to the goods and services already conceded in respect of the 6064, 7622 and 4587 Marks.[46] Nevertheless, the Opponent maintained that the 1034 Mark had been used in relation to all the remaining goods and services for which it is registered.

   [46] Opponent’s Submissions, [32]. See also [28], [39] and [46] of this decision.

9. As a preliminary observation, I note that the 1034 Mark contains the domain name of the Website. It has been recognised that address code material, such as the suffix ‘.NET’, does not substantially affect the identity of a trade mark and such material should be disregarded given it is ‘merely indicia of a domain name’.[47] Likewise, the use of a domain name is capable of constituting trade mark use depending on the content of the website to which it resolves.[48] To this end, a domain name has previously been likened to a shop front insofar as if consumers are directed to visit a website which sells goods, then this is essentially the same as a sign on a shop front indicating that goods are sold within that shop.[49]  

   [47] See, eg, Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, [155] (Kenny J); See also Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, [190] (Rangiah J).

   [48] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, [153] (Kenny J).

   [49] Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700, [50]–[51] (Perram J).

10. The Opponent drew particular attention to the following examples of a packaging box and swing tags as demonstrating use of the 1034 Mark in respect of the goods and services for which it is registered:[50]

    [50] Opponent’s Submissions, [32]. See Annexures BF-14 and BF-15 to the Fitzmaurice declaration made in respect of the 1034 Mark.

Example A Example B

1. Both examples are problematic. Example A is undated and thus does not establish use of the 1034 Mark during the Relevant Period. At the hearing, Mr Thompson opined that the packaging box in Example A was similar to the packaging boxes which appear in dated examples of use during the Relevant Period.[51] An implication being that Example A may demonstrate use of the 1034 Mark during the Relevant Period. In my view, there is no cogent basis to make that inference. This is particularly so given the packaging boxes are not even for the same product. Meanwhile, Example B has been extracted from a sportswear review published on a third party blog during the Relevant Period. As the Applicant highlights, it is not apparent how this blog is connected to the Australian marketplace, the blogger states that she lives in a village in Poland and there is ‘no evidence of users of this site in Australia’.[52] These criticisms have merit and I note that the external links provided in connection with the sportswear being reviewed all direct to the European version of the Website.[53] As such, I am not satisfied that either example demonstrates use of the 1034 Mark in Australia during the Relevant Period.

   [51] See, eg, ‘Social media post B’ photograph which has been reproduced at [41] of this decision.

   [52] Applicant’s Submissions, Annexure B, 44.

   [53] The blog post contains the following links which contain ‘/eu’ immediately after the part of the URL: ‘ ‘ and ‘ wear-siken-womens-tank-top.html’.

2. The Opponent also placed reliance on archived screenshots of the Website[54] as evidence of the use of the 1034 Mark in relation to compression garments, clothing items as well as educational and information services. I accept that the 1034 Mark was used in relation to compression garments. In my opinion, the plain word ‘SKINS’ is substantially identical to ‘SKINS.NET’ given the plain word ‘SKINS’ forms the essential feature of each trade mark. This use of the 5860 Mark also constitutes use of the 1034 Mark with additions or alterations that do not substantially affect its identity.[55]

   [54] As discussed at [29]–[32], [40] and [47] of this decision.

   [55] See [25]–[26] of this decision.

3. However, there is no compelling evidence of the 1034 Mark being used in relation to any goods in classes 18 and 25. As mentioned at [33] of this decision, the evidence filed generally reveals use of the component parts of the 6064 Mark, namely the ‘S’ device and the stylised depiction of the word ‘SKINS’ in relation to the various goods in class 25. I do not consider either component to be use of the 1034 Mark with additions or alterations that do not substantially affect its identity. It is self-evident that the ‘S’ device is not substantially identical to the 1034 Mark. Meanwhile, the 1034 Mark and the stylised depiction of the word ‘SKINS’ are reproduced below:

1034 Mark	Stylised ‘SKINS’ trade mark
SKINS.NET

1. On a side by side comparison, the trade marks are not substantially identical. The essential feature of the 1034 Mark is the word ‘SKINS’. The suffix ‘.NET’ merely indicates a domain name and does not amount to an essential feature of the 1034 Mark. In contrast, the stylised ‘SKINS’ trade mark is comprised of two essential features – namely, the word ‘SKINS’ together with the stylised manner in which it has been depicted. The incomplete letter ‘K’ imbues the stylised ‘SKINS’ trade mark with a degree of ambiguity and enhances its visual impact. For example, the stylised letter “K” could reasonably be viewed as a chevron or an incomplete triangle device. In my assessment, the stylisation is not a mere embellishment nor is it divisible from the word element. To this end, certain parallels may be drawn with the decision in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[56] wherein the following trade marks were determined not to be substantially identical due to their depiction:

   [56] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

Wicked Tail Mark New Wicked Mark

1. In finding that the trade marks were not substantially identical, the Full Court of the Federal Court said:

   Having regard to the presentation of the two marks, including the distinctive tail on the “D” of the Wicked Tail Mark and the font and block characteristics of the New Wicked Mark, we do not consider them to be substantially identical.[57]

   [57] Ibid [162].

2. Accordingly, I consider use of the stylised ‘SKINS’ trade mark constitutes use of the 1034 Mark with additions or alterations that substantially affect its identity.

3. For the class 35 services the evidence filed, at its highest, demonstrates use of the 1034 Mark in relation to the retailing of compression garments and sportswear. However, the evidence does not provide a basis to conclude that the 1034 Mark has been used in relation the broad array of class 35 services for which it is registered. Even when viewed in its most favourable light, the evidence provided for the class 41 services may potentially demonstrate use of the 1034 Mark in relation to providing information about sporting activities. However, the evidence is not sufficient to demonstrate that the 1034 Mark was used in relation to the wider range of services for which it is registered.

   7020 Mark

4. The SGP filed in respect of the 7020 Mark claims that the Prior Registrant used the 7020 Mark ‘in the course of trade in Australia from at least 2012 (its predecessor in title prior to this date) and including during the alleged non-use period’. The SGP states that the alleged use was in respect of goods in classes 10 and 25 and concedes that the 7020 Mark was not used in relation to goods and services in classes 18 and 35.

1. The Opponent’s Submissions diverged from the position adopted in the SGP by claiming that the 7020 Mark was used in relation to the class 35 retail services for compression garments and clothing.[58]

   [58] Opponent’s Submissions, [35].

2. The evidence relied on to establish use of the 7020 Mark consists of a packaging box,[59] archived screenshots of the Website[60] and two social media posts.[61] I note the packaging box is the same example which was discussed at [51] of this decision. Again, the evidence is undated so it does not establish use of the 7020 Mark during the Relevant Period. The website screenshots are examples of use that fall within the Relevant Period and consist of a pop-up banner which provides the consumer with an opportunity to ‘subscribe to the team skins newsletter’ in order to ‘stay up to date with the latest on new products & promotions’. No example of the ‘team skins’ newsletter has been provided nor is there any information on the content of the newsletter. Without more, these examples do not form a sufficient basis to conclude that the 7020 Mark has been used in relation to any of the goods or services in classes 10, 25 or 35.

   [59] See Annexure BF-2 to the Fitzmaurice declaration made in respect of the 7020 Mark.

   [60] See Annexure BF-3 to the Fitzmaurice declaration made in respect of the 7020 Mark.

   [61] See Annexure BF-11 to the Fitzmaurice declaration made in respect of the 1034 Mark.

3. The two social media posts are reproduced below:

Post 1 Post 2

1. In my view, neither example substantiates that the 7020 Mark has been used in relation to any of the goods or services in classes 10, 25 or 35. Post 1 does not demonstrate use in relation to any goods or services because it is purely a message wishing good luck to a sponsored partner of the Prior Registrant. Similarly, it is unclear what goods or services are being offered in Post 2. Even if I were to accept that this post was use in relation to compression garments, the hashtag ‘#TeamSkins’ is unlikely to be interpreted by a consumer as operating as a badge of origin. Instead, I consider it likely to be interpreted as a metadata tag, given its positioning and the other hashtags accompanying it.

2. Accordingly, the evidence filed does not establish that the 7020 Mark was used in relation to any of its registered goods or services in Australia during the Relevant Period.

   7021 Mark

3. The SGP filed in respect of the 7021 Mark conceded that the Prior Registrant had not used the 7021 Mark during the Relevant Period. However, the Opponent’s Submissions asserted that the use of the 7020 Mark allegedly constituted use of the 7021 Mark with additions or alterations that do not substantially affect its identity.[62] Given my finding that there was no use of the 7020 Mark in relation to its registered goods or services during the Relevant Period, it is not necessary to consider this argument advanced by the Opponent.

   Obstacles to use

   [62] Opponent’s Submissions, [36].

4. The Opponent’s Submissions have not asserted that there was an obstacle to the use of any of the Registrations during the Relevant Period.[63] For example, the Opponent has not substantiated that the Prior Registrant was unable to use the Registration due to bankruptcy.[64] For completeness, I confirm that there is nothing in the information before me to suggest that an obstacle prevented use of any of the Registrations in relation to their respective goods and/or services during the Relevant Period.

   [63] Act s 100(3)(c).

   [64] Applicant’s Submissions, [53.1].

   Registrar’s discretion

5. Pursuant to s 101 of the Act, the Registrar has a broad discretion not to remove an unused trade mark if it is satisfied that it is reasonable to do so.

6. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3) of the Act:

   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. This a reflection of the importance of the public interest in maintaining the integrity of the Register and so ensuring that trade marks that fail to comply with the conditions that underpin the entitlement to the statutory monopoly are removed from the Register.

   (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.[65]

   [65] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

7. Three main lines of argument were advanced by the Opponent as to why the Registrar’s discretion ought to be exercised in its favour.[66] First, the Opponent contends that it ‘has a substantial reputation in its SKINS name and SKINS logo in Australia’ such that there is a real risk that any use of the Registrations would lead to consumer confusion if any are used by a third party. Second, to the extent that the evidence does not establish use of the Registrations in relation to their respective goods and/or services, the Opponent asserts that drawing fine distinctions between such goods or services should be avoided. Third, the Opponent submits that there is no evidence that the Registrations have been abandoned nor is there any evidence of other traders having used or sought to use the Registrations. Emphasis was also placed on ‘the fact that the Opponent only became the registered owner in 2019 and that a large amount of historical sales and branding materials during the Relevant Period(s) have been withheld from it’.[67]

   [66] Opponent’s Submissions, [44]–[47].

   [67] Ibid.

8. The Applicant contends that the Registrar’s discretion should not be exercised in the Opponent’s favour in respect of any of the Registrations. In the Applicant’s view, the evidence filed fails to establish the substantial reputation allegedly possessed by the Registrations in Australia and there is no compelling evidence which supports the Opponent’s intention to use the Registrations in the future. Further, the Applicant submits that there is ‘no persuasive evidence that removing the Registrations may cause the public to be confused in Australia’[68] and points out that the onus rests with the Opponent to establish ‘that it is “reasonable that the trade mark should not be removed”’.[69]

   [68] Applicant’s Submissions, [55.3].

   [69] Ibid [55.4].

9. Broadly speaking, the submissions advanced by each party have merit. Based on the evidence before me, it is apparent that some of the Registrations have never been used by the Prior Registrant and seemingly are unlikely to be used in the future notwithstanding Mr Fitzmaurice’s statements indicating otherwise.[70] Likewise, in relation to the Registrations for which evidence of use has been supplied, it is clear that the majority of these trade marks have not been used for all the registered goods and/or services. In some instances, the evidence filed demonstrates that the relevant trade marks were only used in relation a subset of goods and/or services despite the broad ambit of their registered claims.

   [70] See, eg, [20]–[22] of the Fitzmaurice declaration made in respect of the 7511 Mark.

10. Similarly, the evidence provided indicates that some of the Registrations may have been used during the Relevant Period, however, the material is either compromised by the absence of a date or a lack of context. To this end, I acknowledge that the quantity and quality of the evidence filed by the Opponent has, to some extent, been hampered by the non-use applications being filed in close proximity to the Opponent’s acquisition of the Registrations and it has been further exacerbated by the difficulty faced by the Opponent in obtaining historical data regarding the Registrations.

11. With that said, the evidence indicates that some of the Registrations are likely to have enjoyed, or potentially still enjoy, a reputation in the Australian marketplace in relation to compression garments and sportswear. This can be ascertained from the fact that the ‘SKINS’ brand has ostensibly been sold throughout Australia since as early as 1996 through several national retailers. The Prior Registrant elevated the exposure of the ‘SKINS’ brand though various high profile sponsorships by partnering with prominent teams and individuals across various national and international sports. The Australian sales and marketing expenditure figures disclosed are substantial and this adds further credence to the fact that some of the Registrations are, at a minimum, likely to have a residual reputation in Australia. However, I am mindful that only so much can be gleaned from these figures given they relate to part of the Relevant Period and are not sufficiently particularised with respect to which Registrations and goods or services they relate to.

12. Therefore, I will now provide specific comments on the Registrations and whether it is appropriate to exercise the Registrar’s discretion in their favour.

    7680, 7681, 7682, 8063, 8064, 8065, 0635, 8468, 8469, 8470, 8471, 8472 and 8473 Marks

13. There is no evidence of any actual use of these trade mark registrations despite the fact that some of these trade marks have been registered for over eighteen years prior to the non-use applications being filed and the others have been registered for over ten years prior to the non-use applications being filed. The Opponent has baldly stated that it has an intention to use these trade marks and that they are in the planning stages of releasing products under the SKINS brand. However, no further particulars or evidence documenting this intention have been provided. In these circumstances, the limited reasons provided by the Opponent are not substantiated and plainly do not outweigh the public interest in removing unused trade marks from the Register. As such, I am not satisfied that it is reasonable to exercise the Registrar’s discretion in respect of these trade marks.

    5860 Mark

14. For the reasons explained at [26] of this decision, I am satisfied that the 5860 Mark was used by the Prior Registrant in relation to compression garments in Australia during the Relevant Period. The 5860 Mark also includes registered claims in respect of ‘therapeutic compression garments; medical garments; none of the foregoing being made of skin of plant or animal origin’. It is plain that a therapeutic compression garment is a subset of compression garments and thus use has also been established in relation to these goods. With respect to the claim for medical garments, I consider this item to be similar to compression garments[71] and removing it from the registered claim would require a fine distinction to be drawn.[72]

    [71] Act s 101(4).

    [72] See McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481 (Drummond J).

15. On this basis, I am satisfied that it is reasonable to exercise the Registrar’s discretion in respect of this trade mark and preserve the registration in its entirety.

    6064 Mark

16. As mentioned at [32] of this decision, I am satisfied that the 6064 Mark was used by the Prior Registrant in relation to compression garments, t-shirts, tights, shorts and undergarments.

17. In my view, the use demonstrated enables the retention of the 6064 Mark’s class 10 specification in its entirety given the items contained therein are all similar to the goods for which the evidence of use has been established. With respect to the class 28 specification, I am not satisfied that it is reasonable to exercise the Registrar’s discretion in respect of this class. In my view, the items claimed are not similar to those contained in classes 10 or 25 and the Opponent has not provided any cogent reason as to why this class should be retained.

18. In relation to the goods claimed in class 25, I note that restricting these items to reflect the use demonstrated in the evidence does not require fine distinctions to be drawn between the existing goods. Further, there are no cogent reasons before me that weigh in favour of maintaining the registration as it stands.

19. Turning to the services in class 35, I note that the evidence has not demonstrated use of the 6064 Mark in relation these services. However, I am mindful that the retailing of the goods for which 6064 Mark will be preserved is likely to give rise to confusion given services of this nature are generally considered to be closely related to the goods. In this context, it is reasonable to exercise the Registrar’s discretion in respect of class 35 and preserve the registration in respect of retailing services relating to the goods in classes 10 and 25.

    1034 Mark

20. For the reasons explained at [53] and [58] of this decision, I am satisfied that the 1034 Mark was used by the Prior Registrant in relation to compression garments in class 10, the retail of compression garments and sportswear in class 35 and providing information about sporting activities in class 41. 

21. For the reasons explained at [76] above in relation to the 5860 Mark, I consider the use demonstrated enables the retention of the 1034 Mark’s class 10 specification in its entirety given the items contained therein are all similar to the goods for which the evidence of use has been established.

22. I decline to exercise the Registrar’s discretion to preserve the registration of the 1034 Mark for any of the items in the class 18 specification. There is no evidence of the 1034 Mark having been used on any goods that fall within the class 18 specification, which means there is no residual reputation. The public interest clearly weighs in favour of removing this unused class from the registration.

23. I consider that the refinement of the class 35 specification to reflect the demonstrated use does not require fine distinctions to be drawn and there are no cogent reasons as to why the specification should be left unamended. For the class 25 specification, it is reasonable to exercise the Registrar’s discretion to retain sportswear. Similar to the discussion at [81] of this decision, goods of this nature are generally considered to be closely related to the services and I believe that confusion will arise if the registration is not preserved in this manner.

24. In relation to the class 41 services, restricting the services to reflect the use demonstrated in the evidence does not require fine distinctions to be drawn between the existing services. Further, there are no cogent reasons before me that weigh in favour of maintaining the registration in its current form.

    7622 Mark

25. I do not consider that it is reasonable to exercise the Registrar’s discretion for this trade mark registration. I am not satisfied by the evidence of use that the Opponent has a residual reputation in this trade mark or that sales of class 18 goods bearing the 7622 Mark have occurred after the Relevant Period. As such, I decline to exercise the Registrar’s discretion to preserve the registration of the 7622 Mark.

    7020 and 7021 Marks

26. I do not consider that it is reasonable to exercise the Registrar’s discretion in respect of these trade mark registrations. No evidence of use has been provided for the 7021 Mark so there can be no residual reputation. Meanwhile, the evidence provided for the 7020 Mark is minimal. It is not sufficient to demonstrate that any reputation ever existed in this mark or that the 7020 Mark has been used after the Relevant Period. On this basis, I decline to exercise the Registrar’s discretion to preserve the registration of the 7020 and 7021 Marks.

    7511 and 1043 Marks

27. I am not satisfied that it is reasonable to exercise the Registrar’s discretion in respect of these trade marks registrations. The evidence does not show use of either trade mark during the Relevant Period and there is nothing before me to suggest that these trade marks have been used after the Relevant Period. In my view, the public interest weighs in favour of removing these unused trade marks from the Register.

    4587 Mark

28. I do not consider that it is reasonable to exercise the Registrar’s discretion in respect of this trade mark registration. For the reasons outlined at [47] of this decision, the evidence does not establish that the 4587 Mark has been used in relation to any of the services in class 41. There is also no evidence of the 4587 Mark being used after the Relevant Period. Given the absence of any demonstrated use of the 4587 Mark in relation to the services, no residual reputation can exist. As such, I decline to exercise the Registrar’s discretion to preserve the registration of the 4587 Mark.

    1235 Mark

29. I do not consider that it is reasonable to exercise the Registrar’s discretion in respect of this trade mark registration. The Opponent submitted that the ‘running and exercise measurement apparatuses [in class 9] may be used in conjunction with the compression, exercise and sporting apparel’[73] and this forms a basis to exercise the Registrar’s discretion. I disagree. The items encompassed by the class 9 specification are not remotely similar to any of the compression garments and clothing items in classes 10 and 25. There is nothing before me to suggest that the Opponent has a residual reputation in the 1235 Mark for any of the items claimed in class 9 and no evidence of sales after the Relevant Period have been disclosed.  Consequently, I decline to exercise the Registrar’s discretion to preserve the registration of the 1235 Mark.

    [73] Opponent’s Submissions, [34].

    Decision

30. The Opponent has rebutted the allegation of non-use in respect of the 5860 Mark.

31. The Opponent has failed to rebut the allegation of non-use in respect of the 7680, 7681, 7682, 8063, 8064, 8065, 0635, 8468, 8469, 8470, 8471, 8472, 8473, 7622, 7020, 7021, 4587, 1043, 7511 and 1235 Marks. For the reasons stated above, I decline to exercise the Registrar’s discretion to preserve these registrations.

1. In relation to the remaining trade mark registrations, namely the 6064 and 1034 Marks, I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow their respective goods and services to remain unamended. Accordingly, I direct that, one month from the date of this decision, these trade mark registrations be amended in accordance with the amendments outlined in Annexure C to this decision.

2. If the Registrar is served with a notice(s) of appeal within the relevant timeframe, the relevant registration(s) shall not be amended or removed until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration(s) will be subject to that decision.

   Costs

3. Both parties have sought an award of costs. The general rule is that costs follow the event and there is no reason to make an exception here.

4. Accordingly, in respect of trade mark registration 995860, I award costs against the Applicant as per s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth) (‘Regulations’).

5. In respect of trade mark registration 877680, I award costs against the Opponent as per s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations. In respect of trade mark registrations 877681, 877682, 878063, 878064, 878065, 1030635, 1298468, 1298469, 1298470, 1298471, 1298472, 1298473, 1337622, 1407020, 1407021, 1614587, 1671043, 1607511 and 1671235, I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[74]

   [74] [2001] ATMO 78.

6. In respect of trade mark registrations 1106064 and 1671034, as each party has been partially successful, it is appropriate that each party bears its own costs in respect of these matters.

   Nicholas Barbey
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   1 March 2022

   
   

   Annexure A - Registrations

Number	Trade Mark	Class(es)	Priority date
877680	Class 10: surgical garments and pressure garments in this class for the control of vascular and/or circulatory ailments; body splints for stabilization of joint movements Class 25: clothing including tights, leotards, bodysuits, stockings, socks; footwear including boots in this class; headgear Class 35: wholesaling and retailing of clothing, footwear, headgear, surgical and pressure garments, and splints	31 May 2001
877681	Class 10: surgical garments and pressure garments in this class for the control of vascular and/or circulatory ailments; body splints for stabilization of joint movements Class 25: clothing including tights, leotards, bodysuits, stockings, socks; footwear including boots in this class; headgear Class 35: wholesaling and retailing of clothing, footwear, headgear, surgical and pressure garments, and splints	31 May 2001
877682	Class 10: surgical garments and pressure garments in this class for the control of vascular and/or circulatory ailments; body splints for stabilization of joint movements Class 25: clothing including tights, leotards, bodysuits, stockings, socks; footwear including boots in this class; headgear Class 35: wholesaling and retailing of clothing, footwear, headgear, surgical and pressure garments, and splints	31 May 2001
878063	Class 10: surgical garments and pressure garments in this class for the control of vascular and/or circulatory ailments; body splints for stabilization of joint movements Class 25: clothing including tights, leotards, bodysuits, stockings, socks; footwear including boots in this class; headgear Class 35: wholesaling and retailing of clothing, footwear, headgear, surgical and pressure garments, and splints	30 May 2001
878064	Class 10: surgical garments and pressure garments in this class for the control of vascular and/or circulatory ailments; body splints for stabilization of joint movements Class 25: clothing including tights, leotards, bodysuits, stockings, socks; footwear including boots in this class; headgear Class 35: wholesaling and retailing of clothing, footwear, headgear, surgical and pressure garments, and splints	30 May 2001
878065	Class 10: surgical garments and pressure garments in this class for the control of vascular and/or circulatory ailments; body splints for stabilization of joint movements Class 25: clothing including tights, leotards, bodysuits, stockings, socks; footwear including boots in this class; headgear Class 35: wholesaling and retailing of clothing, footwear, headgear, surgical and pressure garments, and splints	30 May 2001
995860	Class 10: compression garments; therapeutic compression garments; medical garments; none of the foregoing being made of skin of plant or animal origin	31 March 2004
1030635	Skins BioAcceleration Technology	Class 10: compression garments included in this class Class 25: compression garments included in this class	19 November 2004
1106064	Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands Class 28: padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads Class 35: retail, wholesale, mail order, e-commerce, sale and distribution of: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads	29 March 2006
1298468	Class 10: surgical and medical garments; pressure garments and devices; compression garments and devices; compression underwear; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands Class 28: articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles Class 35: retail, wholesale, mail order, sale and distribution including online retail, wholesale, mail order, sale and distribution of: surgical and medical garments; pressure garments and devices; compression garments and devices; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-Shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles	8 May 2009
1298469	Class 10: surgical and medical garments; pressure garments and devices; compression garments and devices; compression underwear; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands Class 28: articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles Class 35: retail, wholesale, mail order, sale and distribution including online retail, wholesale, mail order, sale and distribution of: surgical and medical garments; pressure garments and devices; compression garments and devices; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-Shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles	8 May 2009
1298470	Class 10: surgical and medical garments; pressure garments and devices; compression garments and devices; compression underwear; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands Class 28: articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles Class 35: retail, wholesale, mail order, sale and distribution including online retail, wholesale, mail order, sale and distribution of: surgical and medical garments; pressure garments and devices; compression garments and devices; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-Shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles	8 May 2009
1298471	Class 10: surgical and medical garments; pressure garments and devices; compression garments and devices; compression underwear; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands Class 28: articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles Class 35: retail, wholesale, mail order, sale and distribution including online retail, wholesale, mail order, sale and distribution of: surgical and medical garments; pressure garments and devices; compression garments and devices; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-Shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles	8 May 2009
1298472	Class 10: surgical and medical garments; pressure garments and devices; compression garments and devices; compression underwear; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands Class 28: articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles Class 35: retail, wholesale, mail order, sale and distribution including online retail, wholesale, mail order, sale and distribution of: surgical and medical garments; pressure garments and devices; compression garments and devices; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-Shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles	8 May 2009
1298473	100.   Class 10: surgical and medical garments; pressure garments and devices; compression garments and devices; compression underwear; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 101.   Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands 102.   Class 28: articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles Class 35: retail, wholesale, mail order, sale and distribution including online retail, wholesale, mail order, sale and distribution of: surgical and medical garments; pressure garments and devices; compression garments and devices; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-Shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; articles for use in exercise and other sporting activities including articles that support or enhance the body in sporting activities; padded clothing; including padded clothing for men, women, children and babies; protective pads or guards; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads; bags adapted for sporting articles	8 May 2009
1337622	103.   Class 18: bag, including bags of leather and imitation leather; athletic bags; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; wallets; key cases; satchels; shoulder bags; sports bags including all-purpose sports bags; ball bags; bottle bags; boot bags; cricket bags; duffle bags; draw-string bags; football bags; gear bags; gym bags; holdalls; kit bags and team bags; travelling bags; umbrellas	16 December 2009
1407020	TEAM SKINS	104.   Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body 105.   Class 18: bags, including bags of leather and imitation leather; athletic bags; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; wallets; key cases; satchels; shoulder bags; sports bags including all-purpose sports bags; ball bags; bottle bags; boot bags; cricket bags; duffle bags; draw-string bags; football bags; gear bags; gym bags; holdalls; kit bags and team bags; travelling bags; umbrellas 106.   Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing; clothing for motorists and travellers; compression garments; underwear including compression underwear; outerwear, overcoats, leisure clothing; jackets; jumpers; pullovers; sports jerseys; vests; shirts; T-shirts; pants; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; trousers; shorts; pyjamas; dressing gowns; bathrobes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights, including, compression socks and stockings; bandannas and headbands 107.   Class 35: retail, wholesale, mail order, e-commerce, sale and distribution and advisory services for: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; bags, including bags of leather and imitation leather; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; satchels; shoulder bags; sports bags including all-purpose sports bags, ball bags, bottle bags, boot bags, cricket bags, duffle bags, draw-string bags, football bags, gear bags, gym bags, holdalls, kit bags and team bags; travelling bags; wallets; textile and textile goods; bath linen; bed covers, bed sheets and bed clothes; cushion covers; pillowcases; rugs; sheets; sleeping bags; table covers and linen; towels including sports towels, beach towels and bath towels; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing; clothing for motorists and travellers; compression garments; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; sports guards including chest protectors, shin pads, knee pads and elbow pads; advertising services; marketing services; promotional services; sponsorship services; organising competitions	1 February 2011
1407021	108.   Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body 109.   Class 18: bags, including bags of leather and imitation leather; athletic bags; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; wallets; key cases; satchels; shoulder bags; sports bags including all-purpose sports bags; ball bags; bottle bags; boot bags; cricket bags; duffle bags; draw-string bags; football bags; gear bags; gym bags; holdalls; kit bags and team bags; travelling bags; umbrellas 110.   Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing; clothing for motorists and travellers; compression garments; underwear including compression underwear; outerwear, overcoats, leisure clothing; jackets; jumpers; pullovers; sports jerseys; vests; shirts; T-shirts; pants; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; trousers; shorts; pyjamas; dressing gowns; bathrobes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights, including, compression socks and stockings; bandannas and headbands Class 35: retail, wholesale, mail order, e-commerce, sale and distribution and advisory services for: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; bags, including bags of leather and imitation leather; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; satchels; shoulder bags; sports bags including all-purpose sports bags, ball bags, bottle bags, boot bags, cricket bags, duffle bags, draw-string bags, football bags, gear bags, gym bags, holdalls, kit bags and team bags; travelling bags; wallets; textile and textile goods; bath linen; bed covers, bed sheets and bed clothes; cushion covers; pillowcases; rugs; sheets; sleeping bags; table covers and linen; towels including sports towels, beach towels and bath towels; clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing; clothing for motorists and travellers; compression garments; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; sports guards including chest protectors, shin pads, knee pads and elbow pads; advertising services; marketing services; promotional services; sponsorship services; organising competitions	1 February 2011
1607511	111.   Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; sports supports; supports for athletic purposes (other than sports articles) 112.   Class 18: bags, including bags of leather and imitation leather; athletic bags; beach bags; backpacks; handbags; knapsacks; luggage; purses; wallets; key cases; satchels; shoulder bags; sports bags including all-purpose sports bags; ball bags; bottle bags; boot bags; cricket bags; duffle bags; draw-string bags; football bags; gear bags; gym bags; holdalls; kit bags and team bags; travelling bags; umbrellas 113.   Class 35: marketing campaigns including a marketing campaign to promote anti-corruption, anti-doping and anti-drugs in sport, sportsmanship and the spirit of competition; sponsorship services; organising competitions Class 41: education services including educating consumers on the subjects of anti-corruption, anti-doping and anti-drugs in sport, the value of sportsmanship and the spirit of competition; sporting and cultural activities; entertainment; providing information, including online, about education, training, entertainment, sporting and cultural activities; organisation of sporting events; organising charitable fundraising events; production of sporting events; sporting information; web- (blogs); information services relating to sports; organising of promotion for sporting events; sports education services; health education in relation to sports; providing online electronic publications and videos (non-downloadable)	21 February 2014
1614587	Class 41: education services including educating consumers on the subjects of anti-corruption, anti-doping and anti-drugs in sport, the value of sportsmanship and the spirit of competition; sporting and cultural activities; entertainment; providing information, including online, about education, training, entertainment, sporting and cultural activities; organisation of sporting events; organising charitable fundraising events; production of sporting events; sporting information; web- (blogs); information services relating to sports; organising of promotion for sporting events; sports education services; health education in relation to sports; providing online electronic publications and videos (non-downloadable); training services	31 March 2014
1671034	SKINS.NET	114.   Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; sports supports; supports for athletic purposes (other than sports articles) 115.   Class 18: bags, including bags of leather and imitation leather; athletic bags; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; wallets; key cases; satchels; shoulder bags; sports bags including all-purpose sports bags; ball bags; bottle bags; boot bags; cricket bags; duffle bags; draw-string bags; football bags; gear bags; gym bags; holdalls; kit bags and team bags; travelling bags; umbrellas 116.   Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing; clothing for motorists and travellers; compression clothing and garments; underwear including compression underwear; outerwear, overcoats, leisure clothing; jackets; jumpers; pullovers; sports jerseys; vests; shirts; T-shirts; pants; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; trousers; shorts; pyjamas; dressing gowns; bathrobes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights, including, compression socks and stockings; bandannas and headbands; base layer garments and clothing including base layer garments and clothing for sports, physical activity and swimming 117.   Class 35: retail, wholesale, mail order, e-commerce, sale and distribution and advisory services for: surgical and medical garments, compression garments, therapeutic compression garments, stockings, elastic supports including elastic supports for stabilising injured areas of the body, sports supports, supports for athletic purposes, bags, including bags of leather and imitation leather, beach bags, backpacks, handbags, hydration packs, knapsacks, luggage, purses, satchels, shoulder bags, sports bags including all-purpose sports bags, ball bags, bottle bags, boot bags, cricket bags, duffle bags, draw-string bags, football bags, gear bags, gym bags, holdalls, kit bags and team bags, travelling bags, wallets, textile and textile goods, bath linen, bed covers, bed sheets and bed clothes, cushion covers, pillowcases, rugs, sheets, sleeping bags, table covers and linen, towels including sports towels, beach towels and bath towels, clothing, footwear, headgear, including clothing for men, women, children and babies, clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing, clothing for motorists and travellers, compression clothing and garments, underwear including compression underwear, outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes, base layer garments including base layer garments and clothing for sports, physical activity and swimming, swimwear including bathing trunks and bathing suits, thermal clothing, wetsuits, waterproof clothing, wrist bands, shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots, socks, stockings, tights; bandannas and headbands; padded clothing, including padded clothing for men, women, children and babies; padded clothing for sport, sports guards including chest protectors, shin pads, knee pads and elbow pads, advertising services, marketing services, promotional services, sponsorship services, organising competitions Class 41: education services including educating consumers on the subjects of anti-corruption, anti-doping and anti-drugs in sport, the value of sportsmanship and the spirit of competition; sporting and cultural activities; entertainment; providing information, including online, about education, training, entertainment, sporting and cultural activities; organisation of sporting events; organising charitable fundraising events; production of sporting events; sporting information; web-(blogs); information services relating to sports; organising of promotion of sporting events; sports education services; health education in relation to sports; providing online electronic publications and videos (non-downloadable); training services	27 January 2015
1671043	118.   Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; sports supports; supports for athletic purposes (other than sports articles) 119.   Class 18: bags, including bags of leather and imitation leather; athletic bags; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; wallets; key cases; satchels; shoulder bags; sports bags including all-purpose sports bags; ball bags; bottle bags; boot bags; cricket bags; duffle bags; draw-string bags; football bags; gear bags; gym bags; holdalls; kit bags and team bags; travelling bags; umbrellas 120.   Class 25: clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing; clothing for motorists and travellers; compression clothing and garments; underwear including compression underwear; outerwear, overcoats, leisure clothing; jackets; jumpers; pullovers; sports jerseys; vests; shirts; T-shirts; pants; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; trousers; shorts; pyjamas; dressing gowns; bathrobes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights, including, compression socks and stockings; bandannas and headbands; base layer garments and clothing including base layer garments and clothing for sports, physical activity and swimming 121.   Class 35: retail, wholesale, mail order, e-commerce, sale and distribution and advisory services for: surgical and medical garments, compression garments, therapeutic compression garments, stockings, elastic supports including elastic supports for stabilising injured areas of the body, sports supports, supports for athletic purposes, bags, including bags of leather and imitation leather, beach bags, backpacks, handbags, hydration packs, knapsacks, luggage, purses, satchels, shoulder bags, sports bags including all-purpose sports bags, ball bags, bottle bags, boot bags, cricket bags, duffle bags, draw-string bags, football bags, gear bags, gym bags, holdalls, kit bags and team bags, travelling bags, wallets, textile and textile goods, bath linen, bed covers, bed sheets and bed clothes, cushion covers, pillowcases, rugs, sheets, sleeping bags, table covers and linen, towels including sports towels, beach towels and bath towels, clothing, footwear, headgear, including clothing for men, women, children and babies, clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing, clothing for motorists and travellers, compression clothing and garments, underwear including compression underwear, outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes, base layer garments including base layer garments and clothing for sports, physical activity and swimming, swimwear including bathing trunks and bathing suits, thermal clothing, wetsuits, waterproof clothing, wrist bands, shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots, socks, stockings, tights; bandannas and headbands; padded clothing, including padded clothing for men, women, children and babies; padded clothing for sport, sports guards including chest protectors, shin pads, knee pads and elbow pads, advertising services, marketing services, promotional services, sponsorship services, organising competitions

1671235 122.   Class 9: apparatus for data collection; data collection instruments; connecting devices for data collection; electronic heart rate monitors (other than for medical use); electronic heart signal monitors (other than for medical use); electronic heart rate recorders (other than for medical use); electronic temperature monitors, other than for medical use; electronic carbon dioxide monitors (other than for medical purposes); monitors; monitors (computer hardware); monitors (computer programs); monitors for recording events; interfaces between application programs and firmware on real-time computers; real-time data processing apparatus; sensors for real time data input apparatus; sensors for real time data output apparatus; computer software applications (downloadable); downloadable software applications (apps); measuring devices (other than for medical use); measuring apparatus for measuring speed; computer programs; computer software; wireless apparatus including wireless communication apparatus; mobile data apparatus; apparatus for analysis (other than for medical use); computer programs for scientific data analysis; electronic publications (downloadable); databases (electronic publications); apparatus for processing, reading and receiving information; apparatus for the conversion of information; apparatus for transmitting information; apparatus for recording, transmission or reproduction of sound or images; data processing equipment; measuring apparatus and instruments; speed measuring apparatus; distance measuring apparatus; digital recording media in this class 28 January 2015

Annexure B – Evidence in Support

TM Number(s)

Declaration(s)

877680, 877681, 877682, 878064

·     Declaration made on 5 May 2020 by Benjamin Fitzmaurice (Chief Operating Officer of the SKINS division of the Opponent) with Annexures BF-1 to BF-8.

o    Annexure BF-2 contains a declaration made on 3 September 2018 by Michelle Gorton (lawyer for the Prior Registrant) with Annexures 1 to 24 (‘Gorton 1’). This declaration was filed as evidence in an unrelated matter.

878063

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

878065

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

995860

·     Declaration made on 5 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-8.

o    Annexure BF-1 contains Gorton 1.

·     Declaration made on 5 May 2020 by Michelle Gorton (lawyer for the Opponent) with Annexures MG-1 and MG-4 (‘Gorton 2’).

1030635

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-9.

o    Annexure BF-2 contains Gorton 1.

1106064

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-14.

o    Annexure BF-1 contains Gorton 1.

·     Declaration made on 11 May 2020 by Michelle Gorton (lawyer for the Opponent) with Annexures MG-1 and MG-2 (‘Gorton 3’).

1298468

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

1298469

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

1298470

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

1298471

·     Declaration made on 7 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

1298472

·     Declaration made on 6 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

1298473

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-12.

o    Annexure BF-2 contains Gorton 1.

1337622

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-7.

o    Annexure BF-1 contains Gorton 1.

1407020

·     Declaration made on 7 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-13.

o    Annexure BF-4 contains Gorton 1.

1407021

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-14.

o    Annexure BF-4 contains Gorton 1.

1607511

·     Declaration made on 11 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-15.

o    Annexure BF-1 contains Gorton 1.

1614587

·     Declaration made on 7 May 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-11.

o    Annexure BF-3 contains Gorton 1.

1671034

·     Declaration made on 25 September 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-16.

o    Annexure BF-1 contains Gorton 1.

1671043

·     Declaration made on 25 September 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-14.

o    Annexure BF-1 contains Gorton 1.

1671235

·     Declaration made on 25 September 2020 by Benjamin Fitzmaurice with Annexures BF-1 to BF-13.

o    Annexure BF-2 contains Gorton 1.

Annexure C – Amendment to registrations

Number	Trade Mark	Classes
1106064	Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; all being goods in class 10 Class 25: t-shirts, tights, shorts and undergarments clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights; bandannas and headbands Class 28: padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads Class 35: retail, wholesale, mail order, e-commerce, sale and distribution of: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; t-shirts, tights, shorts and undergarments clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads
1671034	SKINS.NET	123.   Class 10: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; sports supports; supports for athletic purposes (other than sports articles) 124.   Class 18: bags, including bags of leather and imitation leather; athletic bags; beach bags; backpacks; handbags; hydration packs; knapsacks; luggage; purses; wallets; key cases; satchels; shoulder bags; sports bags including all-purpose sports bags; ball bags; bottle bags; boot bags; cricket bags; duffle bags; draw-string bags; football bags; gear bags; gym bags; holdalls; kit bags and team bags; travelling bags; umbrellas 125.   Class 25: sportswear clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including cricket, cycling, football, golf, gymnastics, rugby and skiing; clothing for motorists and travellers; compression clothing and garments; underwear including compression underwear; outerwear, overcoats, leisure clothing; jackets; jumpers; pullovers; sports jerseys; vests; shirts; T-shirts; pants; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; trousers; shorts; pyjamas; dressing gowns; bathrobes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, stockings, tights, including, compression socks and stockings; bandannas and headbands; base layer garments and clothing including base layer garments and clothing for sports, physical activity and swimming Class 35: retail, wholesale, mail order, e-commerce, sale and distribution of: surgical and medical garments; compression garments; therapeutic compression garments; stockings; elastic supports, including elastic supports for stabilising injured areas of the body; sportswear clothing, footwear, headgear; including clothing for men, women, children and babies; clothing for sports including football, gymnastics, cycling, golf and skiing; clothing for motorists and travellers; underwear including compression underwear; outerwear, overcoats, leisure clothing, jackets, jumpers, pullovers, sports jerseys, vests, shirts, T-shirts, pants, trousers, shorts, pyjamas, dressing gowns, bath robes; swimwear including bathing trunks and bathing suits; thermal clothing; wetsuits; waterproof clothing; wrist bands; shoes and boots including football shoes and boots, gymnastic shoes, other sports shoes and boots; socks, tights; bandannas and headbands; padded clothing; including padded clothing for men, women, children and babies; padded clothing for sport; sports guards including shin pads, knee pads and elbow pads Class 41: education services including educating consumers on the subjects of anti-corruption, anti-doping and anti-drugs in sport, the value of sportsmanship and the spirit of competition; sporting and cultural activities; entertainment; providing information, including online, about education, training, entertainment, sporting and cultural activities; organisation of sporting events; organising charitable fundraising events; production of sporting events; sporting information; web-(blogs); information services relating to sports; organising of promotion of sporting events; sports education services; health education in relation to sports; providing online electronic publications and videos (non-downloadable); training services