Re: Oppositions by Warrior Australia Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Warrior Sports, Inc to remove trade mark numbers 398525 (class 28) and 398526 (class 25) Warrior

[2020] ATMO 110

TRADE MARKS ACT 1995

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

Re:Oppositions by Warrior Australia Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Warrior Sports, Inc to remove trade mark numbers 398525 (class 28) and 398526 (class 25) - WARRIOR - in the name of Warrior Australia Pty Ltd.

Delegate:	Louise Tuohy
Representation:	Opponent: Roger Syn & Co Patent & Trade Mark Attorneys Applicant: Davies Collison Cave Pty Ltd
Decision:	2020 ATMO 110 Trade Marks Act 1995 (Cth) – application under section 92 – removal application partially successful.

Background

1. Warrior Sports, Inc (‘the Applicant’) applied on 3 January 2018 under the provisions of sub-ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the partial removal of trade mark numbers 398525 and 398526 (collectively ‘the Trade Marks’) in the name of Warrior Australia Pty Ltd (‘the Opponent’). Details of the Trade Marks, appear below:

   Registration No:         398525

   Priority Date:             17 October 1983

   Trade Mark:               WARRIOR

   Specification:             Class 28: Gymnastic and sporting articles (other than clothing), body-building apparatus, body-training apparatus, boxing gloves, boxing bags, protective devices and articles in this class including head-guards and arm-guards

   And

   Registration No:         398526

   Priority Date:             17 October 1983

   Trade Mark:               WARRIOR

   Specification:             Class 25: Clothing including headgear for wear and sportswear but excluding footwear

2. Notices of Intention to Oppose the partial removal applications were filed by the Opponent on 19 March 2018.

3. On 19 April 2018 the Opponent filed its Statements of Grounds and Particulars (‘the SGPs’), completing the Notices of Opposition.

4. Notices of Intention to Defend were filed by the Applicant on 1 June 2018.

5. Thereafter the Opponent and Applicant respectively filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘the Regulations’).

6. In letters issuing from IP Australia on 29 March 2019 the parties were notified that as neither party had requested a hearing, the matter would be given to a delegate of the Registrar of Trade Marks for a decision based on the written record.

7. The oppositions were referred to me as the delegate of the Registrar of Trade Marks on 24 April 2020.

Evidence

1. I am to consider two opposition matters in this decision and I note that the evidence filed in respect of each opposition is the same. The evidence is as follows:

Evidence in Support

• Statutory Declaration by Roger J. Syn, registered Patent and Trade Marks Attorney with Exhibits RJS 17 to 26, made on 6 September 2018 (‘Syn 1’) and includes:

  oExhibit RJS 22, the Statutory Declaration by Phillip K. Pen, Director of Warrior Australia Pty Ltd, made on 17 June 2016, with Exhibits PP 1 to 11;

  oExhibit RJS 23, the Statutory Declaration by Roger J. Syn, registered Patent and Trade Marks Attorney, made on 17 June 2016, with Exhibits RJS 1 to 14;

  oExhibit RJS 24, the Statutory Declaration by Phillip K. Pen, Director of Warrior Australia Pty Ltd, made on 12 December 2016, with Exhibits PP 12 to 14; and

  oExhibit RJS 25, the Statutory Declaration by Roger J. Syn, registered Patent and Trade Marks Attorney, made on 12 December 2016, with Exhibits RJS 15 - 16.

Evidence in Answer

• Declaration by Jonathon Moses, President of Australasia of Globe International Ltd, made on 13 November 2018, with Exhibits JM 1 to 2 (‘Moses’).

• Declaration by Anthony Jefferies, Chief Instructor and Founder of Rensei Karate Australia Pty Ltd, made on 8 December 2018, with Exhibits AJ 1 to 2 (‘Jeffries’).

• Declaration by Nicholas Poulakus, Health Safety Environmental Advisor, made on 12 December 2018 (‘Poulakus’).

• Declaration by Jorge Menidis, Director of the Greek Centre for Contemporary Culture, made on 14 December 2018 (‘Menidis’).

• Declaration by Tony Lolis, registered Patent and Trade Marks Attorney and Senior Council in the employ of Davies Collison Cave Pty Ltd, made on 14 December 2018, with Exhibits TVL 1 to 20 (‘Lolis 1’) and includes:

  oExhibit TVL 20, the Declaration of Taryn Ruvey Lovegrove, Associate in the employ of Davies Collison Cave Pty Ltd, made on 9 July 2018, with Exhibits TRL 1 -6.

• Declaration by Tony Lolis, registered Patent and Trade Marks Attorney and Senior Council in the employ of Davies Collison Cave Pty Ltd, made on 14 December 2018, with Exhibits TVL 21 to 26 (‘Lolis 2’).

Evidence in Reply

• Declaration by Roger J. Syn, registered Patent and Trade Marks Attorney, made on 19 February 2019 (‘Syn 2’).

• Declaration by Roger J. Syn, registered Patent and Trade Marks Attorney, made on 19 February 2018, (‘Syn 3’) and includes:

  othe Statutory Declaration of Roger J. Syn, registered Patent and Trade Marks Attorney, made on 16 December 2018.

Other Material

• Written submission by Roger J. Syn of Roger Syn & Co, made on 1 July 2019, (‘the Opponent’s submission’).

• Written submission by Davies Collison Cave Pty Ltd, made on 18 July 2019, (‘the Applicant’s submission’).

Grounds, Relevant Period, Onus

1. In the SGPs the Applicant nominates the grounds for opposition under sub-ss 92(4)(a) and 92(4)(b) of the Act.

2. The relevant period for the purposes of sub-s 92(4)(a) is the period before 3 December 2017 and the relevant period for the purposes of sub-s 92(4)(b) is the three year period starting on 3 December 2014 and ending on 3 December 2017 (‘the relevant period(s)’).  

3. The burden of proof is the ordinary standard of the balance of probabilities.[1]

   [1] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

4. In relation to trade mark 398525 the Applicant seeks the following restriction to the Opponent’s class 28 goods: gymnastic and sporting articles (other than clothing), body-building apparatus, body-training apparatus, boxing gloves, boxing bags, protective devices and articles in this class including head-guards and arm-guards; excluding all the aforementioned goods relating to hockey, ice hockey or lacrosse

5. In relation to trade mark 398526 the Applicant seeks the following restriction to the Opponent’s class 25 goods: clothing including headgear for wear and sportswear but excluding footwear; excluding all of the aforementioned goods relating to hockey, ice hockey or lacrosse

Legal framework

1. Grounds for removing registered trade marks on the basis of non-use may be found in section 92 of the Act which relatively provides:

92  Application for removal of trade mark from Register etc.

(1)  Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2)  The application:

(a)  must be in accordance with the regulations; and

(b)  may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)  An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

(4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)  to use the trade mark in Australia; or

(ii)  to authorise the use of the trade mark in Australia; or

(iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)  has not used the trade mark in Australia; or

(v)  has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(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.

[…]

1. The opposition will be decided pursuant to section 101 of the Act which relatively provides:

101  Determination of opposed application—general

(1) Subject to subsection (3) and to section 102, if:

(a)  the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b)  the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

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

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

(a)  similar goods or closely related services; or

(b)  similar services or closely related goods;

to those to which the application relates.

1. Under s 100 of the Act it is for the Opponent to rebut any allegation made under sub-ss 92(4)(a) and 92(4)(b) of the Act. Subject to ss 101(3) and 102, s 101(1) provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any or all of the goods to which the applications relate. Section 101(3) provides that the discretion may be exercised in the trade mark owner’s favour (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the applications were made have been established.

Discussion

1. As indicated above, the Applicant has made applications for removal under both sub-ss 92(4)(a) and 92(4)(b). Subsections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Nevertheless, because of the specifics of those provisions sub-s 92(4)(a) merges with sub-s 92(4)(b) once an impugned trade mark has been registered for five years.[2] As the Trade Marks had both been registered for a period longer than five years at the date of the applications for their removal it is necessary only for me to consider the application for removal under sub-s 92(4)(b).

   [2] Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 6^th Ed, 2016) [70.510].

2. In the SGP’s the Opponent particularises the sub-s 92(4)(b) ground as follows:

   The Opponent and its predecessor in title, have continuously used the Trade Marks in Australia for several decades for goods covered by its Trade Marks.

   The Opponent has evidence that such use has continued, even in the period of 3 years, ending one month before the day on which the non-use applications were filed against the Trade Marks.

Use of trade mark 389525 during the relevant period

1. Exhibit RJS-17 of Syn 1, includes a copy of tax invoice 2677 for wholesale sales of Warrior Grill Head Guards and a Warrior Chest Guard, dated 12 September 2016.[3]

   [3] Syn 1 [12], [Exhibit RJS-17].

2. Exhibit RJS-18 of Syn 1 includes a copy of tax invoice 2675 for wholesale sales of Warrior Knee Pads and Warrior Groin Guards, dated 6 September 2016.[4]

   [4] Syn 1 [12], [Exhibit RJS-18].

3. Exhibit RJS-19 of Syn 1, includes a copy of tax invoice 3185 for wholesale sales of a Warrior Curved Focus Pad, Warrior Rubber Star Sets, Warrior Weapons Gloves and Warrior Groin Protectors, dated 5 September 2017.[5]

   [5] Syn 1 [12], [Exhibit RJS-19].

4. Exhibit RJS-24 [PP-13 c] of Syn 1, includes a copy of tax invoice 2437 for wholesale sales of Warrior Groin Guards, Warrior Abdominal and Groin Guards, Warrior Shin Instep Protectors, Warrior Carry Bags, and Warrior Punching Bags, dated 22 December 2015.[6]

   [6] Syn 1, [7], [Exhibit RJS-24, PP-13 c].

5. Exhibit RJS-24 [PP-13 d] of Syn 1, includes a copy of tax invoice 2487 for wholesale sales of Warrior Hand Protectors, Warrior Punching Bags and Warrior Groin Protectors, dated 5 March 2016.[7]

   [7] Syn 1, [7], [Exhibit RJS-24, PP-13 d].

6. Exhibit RJS-24 [PP-13 d] of Syn 1, includes a copy of tax invoice 2637 for wholesale sales of Warrior Hand Wraps, Warrior Round Focus Pad Pairs, Warrior Boxing Gloves, Warrior Punching Bags, dated 28 July 2016.[8]

   [8] Syn 1, [7], [Exhibit RJS-24, PP-13 d].

7. Exhibit RJS-24 [PP-14 b] of Syn 1, includes a copy of a tax invoice for the retail sale of Warrior Hand and Wrist Wraps, dated 5 August 2016.[9]

   [9] Syn 1, [7], [Exhibit RJS-24, PP-14 b].

Use of trade mark 389526 during the relevant period

1. Exhibit RJS-18 of Syn 1, includes a copy of tax invoice 2675 for the wholesale sale of a Warrior Hakama, dated 6 September 2016.[10]

   [10] Syn 1 [12], [Exhibit RJS-18].

2. Exhibit RJS-20 of Syn 1, includes a copy of tax invoice 2175 for wholesale sales of Warrior Shorts and a Warrior T-shirt, dated 12 January 2015.[11]

   [11] Syn 1 [12], [Exhibit RJS-20].

3. Exhibit RJS-21 of Syn 1, includes a copy of tax invoice 2299 for the wholesale sale of a Warrior Hoodie, dated 29 June 2015.[12]

   [12] Syn 1 [12], [Exhibit RJS-21].

4. Exhibit RJS-24 [PP-13 c] of Syn 1, includes a copy of tax invoice 2437 for wholesale sales of Warrior T-shirts, Warrior Tops, Warrior Shorts, Warrior Mixed Martial Arts (‘MMA’) Shorts and Warrior Keikogis, dated 22 December 2015.[13] 

   [13] Syn 1, [7], [Exhibit RJS-24, PP-13 c].

5. Exhibit RJS-24 [PP-13 d] of Syn 1, includes a copy of tax invoice 2487 for wholesale sales of Warrior Uniforms (Judo and Brazilian Jiu-Jitsu (‘BJJ’)) and Warrior Shorts, dated 5 March 2016.[14]

   [14] Syn 1, [7], [Exhibit RJS-24, PP-13 d].

6. Exhibit RJS-24 [PP-13 d] of Syn 1, includes a copy of tax invoice 2637 for wholesale sales of Warrior Muay Thai Shorts, Warrior MMA Shorts, Warrior Uniforms (BJJ, Judo and Karate/Taekwondo) and Warrior Hoodies, dated 28 July 2016.[15] 

   [15] Syn 1, [7], [Exhibit RJS-24, PP-13 d].

7. Exhibit RJS-24 [PP-13 d] of Syn 1, includes a copy of tax invoice 2672 for wholesale sales of Warrior T-shirts, dated 5 September 2016.[16]

   [16] Syn 1, [7], [Exhibit RJS-24, PP-13 d].

8. Exhibit RJS-24 [PP-13 d] of Syn 1, includes a copy of tax invoice 2712 for wholesale sales of Warrior T-shirts and Warrior Shorts, dated 18 October 2016.[17]

   [17] Syn 1, [7], [Exhibit RJS-24, PP-13 d].

9. Exhibit RJS-24 [PP-14 b] of Syn 1, includes copies of tax invoices for the retail sale of the following goods:[18]

   [18] Syn 1, [7], [Exhibit RJS-24, PP-14 b].

• sale of a Warrior T-Shirt, dated 26 August 2015;

• sale of a Warrior Hoodie and Warrior MMA Shorts, dated 26 October 2015;

• sale of Warrior Shorts and Warrior BJJ Pants, dated 22 December 2015;

• sale of Warrior MMA Shorts and Warrior T-shirts, 11 July 2016; and

• sale of a Warrior Hoodie, 5 August 2016.

Evidence of Use - General

1. Exhibit RJS 22 [PP-11] in Syn 1, from the Philip K. Penn Statutory Declaration dated 17 June 2016, provides copies of captured screen shots from the Opponent’s website showing the menu of products offered for sale by the Opponent however I do not find the information reliable as the screen shots are not dated and the product lists do not show the actual items for sale, noting that the product lists include other brands.[19]

   [19] Syn 1 [Exhibit RJS 22, PP-11].

2. Exhibit RJS 22 in Syn 1, from the Philip K. Penn Statutory Declaration dated 17 June 2016 provides sales figures for the financial years 2013/2014 to 2015/2016 (up to May 2016) which are modest, however these figures include other brands sold by the Opponent, although it is stated that around 90% of these sales were attributable to the Trade Marks.[20]

   [20] Syn 1 [14] [Exhibit RJS 22, 12].

3. Exhibit RJS 22 in Syn 1, from the Philip K. Penn Statutory Declaration dated 17 June 2016 also provides advertising figures for the financial years 2013/2014 to 2015/2016 which are low, however the Opponent is primarily a wholesaler, and it is stated that the costs substantially relate to sending catalogues and promotional material to its list of Retailers.[21]

   [21] Syn 1 [14] [Exhibit RJS 22, 14].

Discussion

1. On the basis of the above identified uses of the Trade Marks, I am satisfied that there has been demonstrated use of the Trade Marks in the relevant period in respect of the following limited range of goods:

   Trade Mark 398525

   Class 28: Grill Head Guards; Shin Instep Protectors; Knee Pads; Chest Guards; Curved Focus Pads; Adnominal and Groin Guards; Groin Protectors; Groin Guards; Weapons Gloves; Boxing Gloves; Hand Protectors; Hand Wraps; Wrist Wraps; Rubber Star Sets; Punching Bags; Round Focus Pad Pairs; Carry Bags

   And

   Trade Mark 398526

   Class 25: T-shirts; Tops; Hoodies; Shorts; Shorts for MMA; Shorts for Muay Thai; Pants for BJJ; Hakama; Keikogi; Uniforms for Judo, Karate/Taekwondo and BJJ

2. In the case that I find use of the Trade Marks in respect of a limited range of goods the Opponent has submitted that the Registrar’s discretion under s 101 be exercised in its favour for the remaining goods. I move now to consider the Registrar’s discretion.

Registrar’s discretion

1. As indicated above in the Legal Framework, s 101(3) of the Act provides the Registrar with a discretion to allow goods and services to remain protected by a trade mark even when no use in the period has been demonstrated. Bennet J discussed this scenario in Pioneer Computers Australia Pty Ltd v Pioneer KK:

   [This] is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances.[22]

   [22] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167-168].

2. Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …
   

   [23] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [171-172].

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[23]

3. The Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[24]

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

4. In Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd, the Delegate found that in the exercise of the Registrar’s discretion, there are three factors which fall under the following broad heading to be considered:[25]

   1. the interests of the owner of the trade marks;
   2. the interests of the applicant for removal; and
   3. the public interest.

   [25] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33].

1. The Opponent states that the Trade Marks have a reputation in Australia in relation to a range of martial arts goods, as well as a more broad range of sports clothes and equipment which is demonstrated through  its substantial sales revenue for the years 2007 to 2016, along with its consistent advertising and promotional activities conducted over the same period.[26]

   [26] Syn 1 [12], [14].

2. Moreover, the Opponent argues that the Applicant is seeking to exclude are too similar to those that would be retained and confusion will occur amongst the public, if the Applicant, following removal, registers their trade mark for the remaining goods.

3. The Applicant is seeking restriction of the Opponent’s Trade Marks so that it can secure registration of the following trade mark:[27]

   Trade Mark No:         1897999

   Priority Date:             13 January 2018

   Trade Mark:               WARRIOR

   Specification:             Class 25: Clothing, namely, tee shirts, sweatshirts, shorts, collared shirts, jerseys, hats and footwear; moisture management garments, namely, tee shirts, sweatshirts, shorts, collared shirts, jerseys, hats and footwear; all of the foregoing relating to lacrosse and ice hockey

   Class 28: Lacrosse and ice hockey sticks; lacrosse stick heads; ice hockey stick blades; lacrosse and ice hockey stick handles; protective padding for playing lacrosse and ice hockey, including elbow pads, shoulder pads and shin guards; lacrosse and ice hockey gloves; bags specifically adapted for lacrosse and hockey equipment; parts, fittings and accessories for the aforementioned goods

   [27] The Applicant’s submission [115f].

4. The factual premise of the Applicant’s request is that the Opponent has not used the Trade Marks in respect of goods in relation to hockey, ice hockey and lacrosse.

5. In considering the limited use demonstrated by the Opponent of its Trade Marks, of prime consideration is whether the used goods are similar to goods used in relation to hockey, ice hockey and lacrosse.

6. Section 101(4) of the Act provides that one of the factors which may be considered under s 101(3) is whether the Opponent has made use of the registered Trade Marks on similar goods or closely related services; or similar services or closely related goods.

7. The Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[28] summarised the main considerations for this determination as follows:

   In the case of Jellinek's Application (1946) 1A IPR 393; 63 RPC 59, Romer J. classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.

   [28] Re an Application by John Crowther & Sons (Minsbridge) Ltd (1948) 65 RPC 369, [372].

8. In relation to trade mark 389525 the goods for which the trade mark is registered are the same as the goods for use in hockey, ice hockey and lacrosse. However, at issue is whether the protective equipment and bags for which use has been shown by the Opponent are similar goods to goods used in relation to hockey, ice hockey and lacrosse. The Opponent argues that there is a convergence in the manufacture of sporting goods, and that the goods are sold through the same retail/wholesale channels, to the same customers.[29] The Applicant argues that there are clear differences in nature, uses and trade channels of the goods and the declarations by Mendis, Moses, Poulakos, and Jeffries all suggest that the protective equipment used in martial arts have different physical properties and characteristics to the Applicant’s goods for use in hockey, ice hockey and lacrosse.[30]

   [29] The Opponent’s submission.

   [30] The Applicant’s submission [66].

9. Nonetheless, I accept that the Opponent has established use of a limited range of goods  in class 28 and I consider these are similar to goods used in relation to hockey, ice hockey and lacrosse. The protective equipment highlighted are designed to prevent injury, the goods are worn by consumers who participate in training and sports and the sports industry includes all-encompassing businesses[31] which have diverse distribution channels that include exclusive and multi sports/brand stores.[32]  The same can be said in relation to bags classified in class 28.

   [31] Syn 2 [6-7].

   [32] Syn 3 [4].

10. In relation to trade mark 398525, the registration in class 25 covers clothing including headgear for wear and sportswear but excluding footwear. This broad coverage includes goods in relation to hockey, ice hockey and lacrosse, except for footwear.  

11. I have already determined that the Opponent has established use of the trade mark 398525 in the relevant period in relation to a limited range of the registered goods (‘used goods’). I note that sports clothing is designed in a way to provide comfort and agility, especially when worn during general physical activities or in specific sports activities. In the main, the used goods are worn by consumers who participate in training and sports and, as explained above, the sports industry includes all-encompassing businesses which have diverse distribution channels that include exclusive and multi sports/brand stores. Therefore, I find the used goods in class 25 are similar to goods in relation to hockey, ice hockey and lacrosse.

12. I consider the limitations requested by the Applicant are not appropriate given the similarity of the goods and the likelihood of confusion amongst consumers.

13. Exercising the Registrar’s discretion to maintain the Trade Marks on the Register for all the goods in classes 28 and 25 is also not appropriate because the Opponent has only shown use on a small number of goods and has not demonstrated an intention to use the Trade Marks for all the broad and unqualified range of goods, over the three decades for which the Trade Marks have been registered.

14. That said the Opponent has referred to the issue of ‘fine distinctions’ in respect of goods claims as per Drummond J’s comments in McHattan v Australian Specialised Vehicle System Pty:[33]

    The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown – see Carl Zeiss Pty Ltd’s Application (1969)122 CLR 1 – so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and 1995 Acts.

    But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.

    But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression “any or all of the goods … in respect of which the trade mark … is registered” in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.

    [33] McHattan v Australian Specialised Vehicle System Pty Ltd [1996] FCA 481.

15. Taking this judicial authority into account, I am satisfied that making too fastidious a distinction between goods would be detrimental to the Opponent and in terms of the public interest, to consumers who may in the future then face the potential of confusion when faced with the same or similar trade marks on similar goods. If I am to exercise the Registrar’s discretion, it is in selecting a general word to describe the goods the Opponent has demonstrated use on through its evidence, rather than maintaining the registration for its broad range of goods.

Decision

1. I am satisfied that the Trade Marks have been used in the relevant period with respect to:

   Trade Mark 398525

   Class 28: Grill Head Guards; Shin Instep Protectors; Knee Pads; Chest Guards; Curved Focus Pads; Adnominal and Groin Guards; Groin Protectors; Groin Guards; Weapons Gloves; Boxing Gloves; Hand Protectors; Hand Wraps; Wrist Wraps; Rubber Star Sets; Punching Bags; Round Focus Pad Pairs; Carry Bags

   And

   Trade Mark 398526

   Class 25: T-shirts; Tops; Hoodies; Shorts; Shorts for MMA and Muay Thai; Pants for BJJ; Hakama; Keikogi; Uniforms for Judo, Karate/Taekwondo and BJJ

2. Therefore, I direct that unless this decision is appealed, after one month from the date of this decision the goods in class 28 of trade mark 398525 and the goods in class 25 of trade mark 398526 be amended to the above.

Costs

1. Both parties have requested their costs. However, as both parties have had a degree of success I determine that each party should bear their own costs.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs
25 June 2020