Thomas Cook Boot & Clothing Co. Pty. Ltd. as Trustee for the T C Cook Family Trust v Hancock Prospecting Pty Limited

[2025] ATMO 21

TRADE MARKS ACT 1995

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

Re:Oppositions by Thomas Cook Boot & Clothing Co. Pty. Ltd. as Trustee for the T C Cook Family Trust to applications under section 92 of the Trade Marks Act 1995 (Cth) by Hancock Prospecting Pty Limited to remove trade mark number 313880 (class 25); Thomas Cook (composite) – trade mark number 527222 (class 25); – Thomas Cook - Boot and Clothing Co. (composite) –  trade mark number 529137 (class 42) – Thomas Cook - Boot and Clothing Co. (composite) –  all in the name of Thomas Cook Boot and Clothing Co Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Removal Opponent: Oxygene IP

Removal Applicant: Wrays Pty Ltd

Decision:

2025 ATMO 21

Trade Marks Act 1995 (Cth) – applications under section 92 – use established in relation to t-shirts for 313880 – use established in relation to t-shirts and leather belts for 527222 – no use established in relation to any of the Registered Services for 529137 – no obstacles to use of any of the trade marks – discretion not exercised – partial removal for 313880 and 527222 established – removal for 529137 established.

Background

1. This matter concerns three applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking the removal of the following trade marks (‘Trade Marks’) from the Australian Register of Trade Marks (‘Register’) for non-use:

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

   Trade mark number:               529137

   Owner:             Thomas Cook Boot and Clothing Co Pty Ltd

   Filing date:  21 February 1990

   Trade mark:  

   (‘529137’)

   Services:  Class 42: Services in this class in connection with the retailing of clothing and footwear including coats, hats, boots, belts, shirts, jumpers, trousers and pants (‘Registered Services)

   Endorsement: Registration gives no right to the exclusive use of the words BOOT & CLOTHING CO and COBB & CO The provisions of sub-section 26(2) applied The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

   ---

   Trade mark number:               313880

   Owner:             Thomas Cook Boot and Clothing Co Pty Ltd

   Filing date:  9 December 1977

   Trade mark:                  

   (‘313880’)

   Goods:  Class 25: Footwear and clothing (‘Registered Goods’)

   Endorsement

   : The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

   
   

   Registration of this trade mark shall give no right to the exclusive use of the names ‘THOMAS COOK’ and ‘COBB & CO.’ and the words ‘BOOT SPECIALISTS’

   ---

   Trade mark number:               527222

   Owner:             Thomas Cook Boot and Clothing Co Pty Ltd

   Filing date:  19 January 1990

   Trade mark:  

   (‘527222’)

   Goods:  Class 25: Registered Goods

   Endorsement: Registration gives no right to the exclusive use of the words BOOT & CLOTHING CO and COBB & CO The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995. The provisions of sub-section 26(2) applied

2. On 9 November 2023, Hancock Prospecting Pty Limited (‘Removal Applicant’) filed requests for removal of each of the Trade Marks for non-use under s 92(4)(b) for all of the Registered Goods and Registered Services.

3. On 12 January 2024, Thomas Cook Boot & Clothing Co. Pty. Ltd. as Trustee for the T C Cook Family Trust (‘Removal Opponent’) filed its Notices of Intention to Oppose the applications for removal.

4. On 12 February 2024, the Removal Opponent filed its Statements of Grounds and Particulars (‘SGP’) in relation to each of the oppositions to removal.

5. On 28 February 2023, the Removal Applicant filed its Notices of Intention to Defend in relation each of the oppositions to removal.

6. Regarding 529137, on 31 May 2024 the Removal Opponent filed its Evidence in Support (‘EIS’) being a declaration of Murray Cook, Managing Director of the Removal Opponent, dated 29 May 2024 with Exhibits MC-1 to MC-5 (‘Cook-1’). The Removal Opponent also filed a declaration of Debbie Carlene McCosh, dated 29 May 2024 (‘McCosh’) and of Tegan Black, of Kingstons Rural Supplies, dated 29 May 2024 (‘Black’).

7. Regarding 313880, on 31 May 2024 the Removal Opponent filed its EIS being a declaration of Murray Cook, dated 29 May 2024, with Exhibits MC-1 to 4 (‘Cook-2’) and a declaration of Tegan Black, of Kingstons Rural Supplies, dated 29 May 2024 (‘Black’).[2]

   [2] I note that this declaration is identical in its contents to that of Black. Accordingly, I refer to them both as ‘Black’ throughout these written reasons.

8. Regarding 527222, on 31 May 2024 the Removal Opponent filed its EIS being a declaration of Murray Cook, dated 29 May 2024, with Exhibits MC-1 to 4 (‘Cook-3’). The Removal Opponent also filed a copy of Black, a declaration of Vasiliki Bessie Comino, of P Comino & Sons, dated 29 May 2024 (‘Comino’) and a declaration of Cassandra Bailey of Thomas Cook DFO, dated 31 May 2024 (‘Bailey’).

9. The Removal Applicant did not file Evidence in Answer in relation to any of the oppositions to removal.

10. The Removal Opponent requested a decision without a hearing for each of the oppositions. None of the parties requested to be heard in relation to any of the oppositions. I am to decide these matters as a delegate of the Registrar of Trade Marks.

    Relevant period and onus

11. Section 92 relevantly provides:

    92  Application for removal of trade mark from Register etc.

    …

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

    …

    (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)  used the trade mark in Australia; or

    (ii)  used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

12. Sufficient time has passed for s 92(4)(b) to be alleged.[3] By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish the use of the Trade Marks in Australia in the three year period ending on 9 October 2023 (‘Relevant Period’) or that the Trade Marks were not used in relation to the Registered Goods and Registered Services because of circumstances that were an obstacle to the use of the Trade Marks during the Relevant Period. The Removal Applicant alleges that there has been no use of the Trade Marks in relation to any of the Registered Goods and Registered Services in the Relevant Period. The allegation can be rebutted by establishing use by the owner of the Trade Marks or by an ‘authorised user’.

    [3] Section 93(2).

13. It is the Removal Opponent who must rebut the allegation of non-use.[4] Any findings of fact are based on the civil standard of the balance of probabilities.[5]

    [4] Section 100(1)(c).

    [5] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).

14. ‘Use as a trade mark’ is use of a trade mark as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and/or services and the person who applies the sign to those goods and/or services.[6] This does not require the actual sale or purchase of the goods and/or services.[7] A commercial dealing in relation to the services under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’. A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge the onus,[8] although if only a single instance of use is alleged it should be established by, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9]

    [6] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

    [7] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).

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

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

15. If the requisite use is not established, in accordance with s 101 I may decide to remove the Trade Marks, or if satisfied it is reasonable to do so, decide to not remove them. I explain this discretion in more detail further below.

    Evidence

    Cook-1, McCosh and Black

16. Cook-1 describes the history of the Removal Opponent and its business operations. This includes references to the issuing in 2023 of a range of t-shirts referred to as the ‘TC Heritage Logo Collection’, which are shown at MC-1 to Cook-1. MC-1 shows 529137 on a t-shirt with the product code.

17. Exhibit MC-2 to Cook-1 consists of lists of TC Heritage Logo Collection t-shirts for which invoices were apparently issued by the Removal Opponent in the Relevant Period to various named individuals and businesses.

18. Exhibit MC-3 to Cook-1 exhibits photographs of what appear to be boot boxes which are undated which show 529137. Cook-1 declares that ‘the boxes contain boots that are currently for sale and have been for sale for a number of years, before, after and during the Relevant Period’.

19. Exhibit MC-4 shows a photograph of a store named ‘Stable & Affairs’ located in Pinjarra, Western Australia. The photographs show a poster on display at the retailer which features 529137.

20. Exhibit MC-5 consists of a photograph of a boot box which bears 529137. In this regard, Cook-1 declares, ‘I am reliably advised by one of my stockists – Lanskey’s Saddlery… that the photograph was taken in 2018, and that it was used in the stockists shop for advertising in conjunction with a promotional poster…’.

21. McCosh declares that, ‘the poster advertising Thomas Cook Boot and Clothing Company BRAND between 2020 and 2023 has been in our store Stable Affairs Pinjarra’.

22. Black contains the following apparently incomplete text which I extract below:  

    Cook-2

23. Cook-2 mirrors the description of the history of the Removal Opponent’s business set out in Cook-1.

24. Exhibit MC-1 to Cook-2 is almost identical to that in MC-1 to Cook-2. The sole difference appears to be that an image of a t-shirt bearing 313880 is present in Cook-2 at Exhibit MC-1.

25. Exhibit MC-2 to Cook-2 is a list of t-shirts, alongside product codes, which have been issued by the Removal Opponent to various retailers. This mirrors MC-2 to Cook-1.

26. Exhibit MC-3 consists of a tax invoice, with an order, issue and dispatch, dated 28 August 2023. This was issued by the Removal Opponent to a business named Frontline Stores Pty Ltd. The invoice mentions the product codes TPR1516500 and TPR1516502 as goods listed as sold. Exhibit MC-3 to Cook-2 also includes a photograph of two t-shirts bearing 313880. Cook-2 declares that the photographs are of the t-shirts referred to in the tax invoice.[10]

    [10] Cook-2, [11].

27. Exhibit MC-4 consists of photographs of boxes for boots which Cook-2 declares were available for sale during the Relevant Period.[11] Cook-2 declares that ‘the boxes contain boots that are currently for sale and have been for sale for a number of years, during and after the Relevant Period.’

    [11] Cook-2, [12].

    Cook-3, Comino and Bailey

28. Cook-3 mirrors the background provided in Cook-1 and Cook-2 regarding the Removal Opponent.

29. Exhibit MC-1 to Cook-3 mirrors the contents of Exhibit MC-1 to Cook-1. However, it also shows a WayBack Machine screen capture of the website dated 12 March 2021, showing 527222 on a belt buckle on a leather belt.

30. Exhibit MC-2 to Cook-3 consists of sales data titled ‘S23 TC Heritage Logo Collection Tees Invoiced prior to 9^th Oct 2023’, which appears to be for the period 1 August 2023 to 9 October 2023. MC-2 also includes a table of data titled, ‘invoiced sales for TCP1159BEL – THOMAS BELT 09/10/202-30/11/2022’. Also, at Exhibit MC-2 is a tax invoice from the Removal Opponent to a business named Affordable on Elizabeth for a range of goods including a belts and t-shirts. The date of the invoice is 15 October 2020.

31. Present at Exhibit MC-2 to Cook-3 are various tax invoices (‘Invoices’).  All of the Invoices are dated within the Relevant Period. At the header of the Invoices is the following trade mark:

    (‘TC-Horseman’)

32. Most of the products mentioned in the Invoices do not have any image throughout the evidence which I can cross reference with a product description to ascertain whether there has been use of 527222, nor is it clear from the product description or code. This includes goods such as oil skin hats, cotton shirts, jeans, plait belts, kids thermals, vests, polos and jumpers.

33. Exhibit MC-3 to Cook-3 consists of photographs of apparently the shopfronts of business, such as that of Nutrien Ag Solutions in New South Wales and the store door of O’Dea’s Saddlery in Victoria, each showing 527222 on their store front signage. There is also a screen capture of the website (‘Heilbronns’) which is said to supply apparel. The screen capture displays 527222 with other trade marks under the heading ‘Distributor of:’. A WayBack Machine capture of the same is dated 3 November 2022.

34. At Exhibit MC-4 is a poster showing persons wearing jeans and boots. The words ‘Thomas Cook Reb Boot’ appear at the top of the poster and 527222 appears at the bottom. Exhibit MC5 consists of photographs of tagged pairs of jeans which bear the logo on labels showing 527222. Exhibit MC-6 consists of undated photographs of boxes of boots which show 527222. Exhibit MC-7 is an undated photograph showing the back of a pair of dungarees which bear 527222 on the back pocket.

35. Comino states that ‘the Thomas Cook Johnny Reb poster bearing the Thomas Cook logo shown above, has been on display in our store continuously for at least the past 20 years. We continue to display it as it personifies the toughness and durability of Thomas Cook footwear’.

36. Bailey states that, ‘we received this belt in our store as stock to sell and put it out for sale in 2021. The belt code is TCP1959bel’.

    Consideration

    Use of the Trade Marks in the Relevant Period

    529137

37. The evidence at Exhibit MC-2 in combination with the evidence at Exhibit MC-1 to Cook-1 shows use of 529137 in relation to the wholesale of t-shirts. Whilst Exhibit MC-3 appears to show the top and end of boxes for boots which display 529137, there is no evidence of a sale, much less any evidence that these boxes were used in relation to services in connection with retailing of clothing or footwear in the Relevant Period.

38. Exhibit MC-4 to Cook-1 shows a photograph apparently taken 7 October 1993 of a storefront. This appears to feature an advertising poster which displays 529137. I note that a declaration at Exhibit MC-5 declares that poster advertising which shows 529137 between ‘2020 and 2023 has been in our store…’. There are no further details, for example about the specific goods or services to which the use related. I do not consider this evidence sufficient to demonstrate use of the Trade Mark in relation to services in connection with the retailing of clothing and/or footwear.

39. Whilst Exhibit MC-2 and Cook-1 mentions a ‘Thomas Cook DFO Store’ in Queensland, there is no detail about the specific trade mark that might have been used in relation to retail services. There is no evidence of, for example, the images of a retail store front operated by the Removal Opponent bearing 529137.

40. Exhibit MC-2 to Cook-1 mentions apparent sales to retailers and individuals. The individuals named are all specified in Cook-1 as employees of Removal Opponent.[12] Without more information, I am unable to conclude whether the nature of these sales were genuine retail or wholesale sales. Accordingly, these do not amount to evidence of a retail sale.

    [12] Cook-1, [10].

41. Exhibit MC-2 mentions that there were sales of t-shirts made with logos. However, this evidence would at most amount to a use in relation to the actual goods being t-shirts rather than in relation to retail services. Whilst there is also some evidence of the wholesale of t-shirts, a remaining issue is whether wholesale services are included in the language of the specification of 529137. The specification is limited to retail services and I have nothing before me to suggest otherwise. Showing use in relation to wholesale services is not the same thing as use in relation to retail services. I am not satisfied that this evidence shows use of 529137 in relation to retail services.

42. Accordingly, my conclusion is that none of the evidence shows use of 529137 in relation to the Registered Services.

    313880

43. I confirm that none of the evidence corroborates the use of 313880 in relation to any of the Registered Goods other than t-shirts and, perhaps, boots, which I explore further below.

44. Whilst Cook-2 and Exhibit MC-4 to Cook-2 refer to photographs of boxes for boots, one of which shows 313880, there is no corroboration that the goods inside the box are boots. Even assuming that use of 313880 is in relation to boots, the evidence does not corroborate this use as in the Relevant Period, other than by general statements of the Removal Opponent. I am not satisfied that there has been use of 313880, in relation to boots, in the Relevant Period on the evidence before me.

45. I note that Exhibit MC-1 to Cook-2 shows an image of a t-shirt bearing 313880 alongside the product code TPR1516500. Another such image, declared to be dated in August 2023 also confirms this reference.

46. The sales figures in Exhibit MC-2 to Cook-2 refer to retailers as having purchased quantities of goods having the product code TPR1516500, in the period 1 August 2023 to 9 October 2023. Whilst the quantities are small, the sales figures confirm that there were sales of t-shirts to various businesses which displayed 313880.

47. For completeness, I note that Exhibit MC-2 to Cook-2 does not appear to refer to any goods other than t-shirts.

48. I am satisfied that the Removal Opponent has used 313880 in relation to t-shirts, in the Relevant Period.

    527222

49. I confirm that Exhibit MC-1 to Cook-3 shows 527222 in relation to leather belts. Such leather belts appear to have the product code TCP1959BEL and title ‘Thomas Belt’. Sales data at Exhibit MC-2 to Cook-3 shows sales of products having that code and description in the period 9 October 2020 to 30 November 2022. Accordingly, I am satisfied that the Removal Opponent has used 527222 in relation to leather belts.

50. T-shirts bearing 527222 appear to have the product code TPR1516501 which also appear in the sales figures at MC-2 to Cook-3. I am satisfied that there were sales of these goods and that the Removal Opponent has used 527222 in relation to t-shirts in the Relevant Period.

51. Whilst Exhibit MC-6 to Cook-3 shows boxes, apparently for boots, and Exhibits MC-5 and MC7 to Cook-3 show 527222 in relation to dungarees, none of this evidence is dated. Furthermore, regarding the dungarees at MC-6 to Cook-3, Cook-3 declares that ‘I am reliably advised were found in storage and kept as a historical item of clothing but not for sale, in our stockist’. Accordingly, this evidence does not assist the Removal Opponent in demonstrating use as a trade mark in the Relevant Period.

52. For completeness, I note that the use of TC-Horseman at Exhibit MC-2 to Cook-3 does not assist as I am not satisfied that this has been use in relation to the Registered Goods rather than in relation to wholesale services. Regardless, I consider TC-Horseman to have additions or alterations which would substantially affect the identity of 527222. Accordingly, the Invoices do not assist in demonstrating use of 527222 for any other goods.

53. Overall, I am satisfied that the Removal Opponent has used 527222 in relation to leather belts and t-shirts.

    Obstacles to use

54. I note that there is no compelling evidence or statements made in these proceedings which demonstrate any obstacle that prevented the good faith use of the Trade Marks in relation to the Registered Goods and/or Registered Services during the Relevant Period.

55. Cook-1, Cook-2 and Cook-3 do note the following regarding the boot box pictured at Exhibit MC-5:

    Unfortunately, the boot box and a set of promotional memorabilia was lost to the flooding that hit Townsville in 2019. If not for the flooding, they would still be in use for advertising in the shop. I am further reliably advised by the stockist that she is very upset to have lost this particular item and other heritage products during the flood and misses her ability to display this history and relationship between us as stockist and supplier.

1. Overall, the evidence is insufficient to demonstrate any obstacle to the use of the Trade Marks.

   Registrar’s discretion

2. I note my findings that the only evidence of use of 313880 and 527222 in Relevant Period is in relation to limited Registered Goods. The evidence does not establish that there has been use of these trade marks in relation to any other goods, including other clothing or footwear. Furthermore, the evidence does not establish the use of 529137 in relation to the Registered Services.

3. Section 101(3) provides me with a broad discretion to not remove the Trade Marks from the Register in respect of the remaining Registered Goods/and or Registered Services even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. The Removal Opponent need not establish ‘exceptional circumstances’.[13]

   [13] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J), citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).

4. Various factors are to be considered in applying s 101. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the Federal Court observed of s 101(3) and the relevant factors:

   [t]he 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. ...

   (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.[14]

   [14] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

5. The Removal Opponent by the SGPs asserts that it, ‘has used the words THOMAS COOK as a prominent feature of the Trade Mark, and other registered trade marks for the Goods, for similar goods or for closely related services before, during and after the Relevant Period.’ Some of the declarations in evidence have also provided broad statements which suggest a long period of time of alleged use of the Trade Marks or at least a long history of the Removal Opponent’s business.

6. However, the Removal Opponent provides unsatisfactory, if any, corroborating evidence of any compelling reason for the Trade Marks to remain on the Register for the Registered Goods or Registered Services. The extent of the use that has been shown is quite minimal in trade volume and confined to use relating to t-shirts and leather belts, and the wholesale thereof. I am conscious of the public interest in the Register reflecting what is being used by traders.

7. Balancing the relevant considerations and noting all of the evidence, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Registered Goods or the Registered Services.

   Decision

8. I direct that one month from the date of this decision the following amendments be made to 527222 and 313880 (additions in bold and deletions in strikethrough):

   527222

   ·Footwear and clothing being t-shirts and leather belts

   313880

   ·Footwear and clothing being t-shirts

9. I direct that 529137 be removed from the Register.

10. If the Registrar is served with a notice of appeal within the relevant timeframe, the Trade Marks shall be treated in accordance with the decision of the Court.

    Costs

11. Both parties have sought costs in respect of each of the oppositions. The Removal Opponent specifically requested that costs be considered separately in respect of each of the oppositions. I confirm that as there are some differences in the evidence, I have considered the matter of costs separately for each of the oppositions.

12. Whilst costs ordinarily will follow the event, each of the parties has had a measure of success in respect of 527222 and 313880. I decline to make an award of costs in respect of the oppositions for trade marks 527222 and 313880.

13. As costs ordinarily follow the event and I see no reason to depart with that approach, I award costs against the Removal Opponent in respect of 529137.

    Benjamin Goldsworthy

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    31 January 2025