Shannon Associates Ltd v Marlon Goldstein

This matter concerned an application for removal of a trade mark from the Register of Trade Marks, brought by Marlon Goldstein (the applicant) against Shannon Associates Ltd (the opponent). The application was heard by a delegate of the Registrar of Trade Marks. The applicant did not appear or make written submissions, while the opponent presented submissions through its legal representative.

The primary legal issue before the delegate was whether the trade mark MUG N BEAN should be removed from the Register due to non-use. The opponent also contended that the removal action was initiated in bad faith and that the trade mark was well-known, warranting protection under Article 6bis of the Paris Convention.

The delegate considered evidence from the opponent detailing the extensive development and international use of the MUG N BEAN trade mark since 1992. This included significant investment in marketing and advertising, substantial worldwide turnover, and the establishment of numerous stores in various countries, including South Africa, the Middle East, and the United Kingdom, with plans for further expansion in North America. The opponent argued that due to this widespread use and recognition, Australian residents travelling internationally would likely be familiar with the mark. The delegate noted the opponent's assertion that the trade mark was already registered in Australia when they sought to enter the market, leading them to purchase the existing registration. The opponent also highlighted their participation in franchise associations and various industry awards, underscoring the brand's success and reputation.

The delegate found that the opponent had established that the MUG N BEAN trade mark was well-known internationally and that the applicant's non-use removal action appeared to be initiated in bad faith. Consequently, the delegate exercised discretion to refuse the removal of the registered trade mark.