FEDERAL COURT OF AUSTRALIA
Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd [2025] FCA 218
ORDERS
VID 331 of 2024 BETWEEN: SOMERS ENTERPRISES AUSTRALIA PTY LTD (ACN 050 236 069)
Appellant
AND: BASEFUN PTY LTD
Respondent
ORDER MADE BY:
BENNETT J
DATE OF ORDER:
21 MARCH 2025
THE COURT ORDERS THAT:
1.The appeal be allowed.
2.The decision of the Registrar of Trade Marks be set aside.
3.The Appellant’s opposition to the Removal Action succeed in part and the Trade Mark remain registered on the Register…
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Details
- Case
- [2025] FCA 218
- Decision Date
CaseChat Overview and Summary
Somers Enterprises Australia Pty Ltd challenged a decision of the Registrar of Trade Marks to remove the trade mark 'Celebrity Head' from the Register of Trade Marks for non-use. The Full Court of the Federal Court of Australia allowed the appeal and ordered that the trade mark remain registered. The Court held that the use of the trade mark was sufficient to justify its retention on the Register. The appeal was allowed, and the decision of the Registrar of Trade Marks was set aside. The trade mark remains registered in respect of board games; games; toys and playthings; video game apparatus. Both parties were directed to file submissions on the question of costs by specific dates.
The primary legal issue before the Court was whether the Appellant's use of the trade mark 'Celebrity Head' was sufficient to justify its retention on the Register of Trade Marks. The Court considered the extent and nature of the use of the trade mark and whether it constituted relevant use within the meaning of the Trade Marks Act 1995 (Cth). The Appellant argued that the use of the trade mark on a television show and in the sale of a board game constituted relevant use. The Court agreed, finding that the use was sufficient to justify retention on the Register. The Court distinguished the case from those where use was considered too preliminary, noting that the board game had achieved substantial market success in the past and that there was an intention to revive the game. The Court concluded that the trade mark was relevantly used if it was used 'in the course of trade' and that preparatory steps coupled with an intention to offer or supply goods in trade could be sufficient to establish use.
The primary legal issue before the Court was whether the Appellant's use of the trade mark 'Celebrity Head' was sufficient to justify its retention on the Register of Trade Marks. The Court considered the extent and nature of the use of the trade mark and whether it constituted relevant use within the meaning of the Trade Marks Act 1995 (Cth). The Appellant argued that the use of the trade mark on a television show and in the sale of a board game constituted relevant use. The Court agreed, finding that the use was sufficient to justify retention on the Register. The Court distinguished the case from those where use was considered too preliminary, noting that the board game had achieved substantial market success in the past and that there was an intention to revive the game. The Court concluded that the trade mark was relevantly used if it was used 'in the course of trade' and that preparatory steps coupled with an intention to offer or supply goods in trade could be sufficient to establish use.
Orders
Orders of the court
1. The appeal be allowed.
2. The decision of the Registrar of Trade Marks be set aside.
3. The Appellant’s opposition to the Removal Action succeed in part and the Trade Mark remain registered on the Register of Trade Marks in respect of board games; games; toys and playthings; video game apparatus.
4. The Appellant to file any submissions on the question of costs by 4 pm on 2 April 2025, not exceeding two pages.
5. The Respondent to file any submissions on the question of costs by 4 pm on 4 April 2025, not exceeding two pages.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Basefun filed a submitting notice on 13 June 2024. In that notice, Basefun stated that it submits to any order that the Court may make in this proceeding and that it wishes to be heard on the question of costs. Consequently, Basefun took no active part in the proceeding and filed no evidence. Background facts The evidence in the proceeding comprises the material filed by the Appellant, being the: (1)affidavit of Daryl Somers dated 12 September 2024 (the D Somers Affidavit);(2)affidavit of Julie Somers dated 12 September 2024 (the J Somers Affidavit); and (3)affidavit of Peter Knowles dated 12 September 2024 (the Knowles Affidavit). The evidence establishes a number of factual propositions. The Trade Mark was coined by Mr Daryl Somers and was first used by him on the television show Hey Hey It’s Saturday on 8 June 1991. The Trade Mark was applied to a parlour game that featured as a recurring part of the show until 20 November 1999. The Trade Mark was then used in a Hey Hey It’s Saturday reunion show in 2009, and during the show’s airing of a new season in 2010, until 27 November 2010. The structure of the game became well known: the name of a celebrity is displayed above the head of each player on a headband. Everyone other than that player can see the name of the celebrity. Each player then asks ‘yes or no’ questions until they identify the name of the person displayed above their head. In the television version, a cast member of Hey Hey It’s Saturday or a visiting celebrity would take part in the game. They were each assigned a home viewer and a prize was awarded to the home viewer if ‘their’ contestant won. The segment generated humour by the way in which the television contestants reacted to the various questions that were asked and the answers that they received. In this way, the television show not only explained the rules of the game to the watching audience, it also modelled a funny and engaging version of the game. This no doubt made the purchase of a home board game version more appealing to consumers. In 1992, the Appellant entered into an agreement with Basefun to manufacture and distribute the Celebrity Head board game. The board game was promoted on Hey Hey It’s Saturday in a range of ways, including that: (1)it was offered as a consolation prize for viewers whose nominated competitor was a runner up in the game; (2)Mr Somers would speak about the game and promote it as a way that viewers could play ‘Celebrity Head’ at home; and(3)footage was occasionally shown of individuals playing the board game in the course of an episode of Hey Hey It’s Saturday (generally immediately after or as part of the ‘Celebrity Head’ segment). The board game mirrored the game being played on the television show. There were some elements of the board game which came to feature in the television show: most notably the use of red hands on either side of the celebrity names: The rules of the board game were generally analogous to the rules used on the television show, albeit adapted to home use. In effect, the board game relied upon the familiarity that the audience had with the rules and operation of the game from the television show to support interest in buying the board game. Potential purchasers of the board game were aware of how it worked, and why it was fun because they had watched it be played on a regular basis on a popular television show over many years. The Appellant asks me to conclude that there is a connection between the television show which created the game, and the board game that mimicked it. I agree with the Appellant’s submission in this respect. This is an important aspect of the question of use, to which I will return.
Evidence
Evidence Before The Court
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Decision
Reasons for decision
The situation in this case can be distinguished from cases considering whether use was too preliminary in circumstances where there was no pre-existing trade-channels (see, eg, Settef SpA v Riv-Oland Marble Co (Vic) Pty Limited (1987) 10 IPR 402). Instead, the evidence before me indicates that the board game was one of the top ten board games of 1993 and was among Target’s number one selling board games for a time. This historical success showcases Celebrity Head had a substantial market presence in Australia as a board game. The correspondence between Basefun and the potential distributor in 2020 make clear that the past historical success, and consequent market knowledge of the game, informed part of the motivation to pursue the discussions for the revival of the product. The correspondence that was put into evidence showed an intention to return the game to the market within a relatively confined time period. When considered in combination with the ongoing promotion of the game via the website in the Non-Use Period, the situation in this case can be distinguished from those cases in which the use was too preliminary. Conclusion A trade mark is relevantly used if it is used ‘in the course of trade’ (Gallo at [51]).It need not be used much, but it must be in good faith. In Dick Smith, two instances of use, one being a television skit and the other being a radio interview, were sufficient to show use in the statutory non-use period. Justice Katzmann observed at [118] (emphasis in original):the Act contemplates the registration of trade marks in relation to goods at a time before they are traded. The language used in the very definition of a trade mark in s 17 is of “a sign used, or intended to be used, to distinguish goods ... dealt with or provided in the course of trade ...” It is not controversial that there need not be an actual dealing in goods bearing the trade mark to establish local use (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 433 (Moorgate)). Preparatory steps coupled with an existing intention to offer or supply goods in trade could be sufficient to establish use (Moorgate at 433-4 (Deane J); Buying Systems at 520 (Gummow J)). Steps antecedent to the sale or the offering for sale of the trade marked goods can constitute use (Dick Smith at [155]-[158], [237]). In Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, Drummond J emphasised (at [40]) that: [T]he owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect. Each case turns on its own facts. However the cases make clear that there is a line between steps preparatory for sale on the one hand, and preliminary steps on the other. The former may be use while the latter will not be.
Ratio Decidendi
Legal Principle Established
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