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

Thomas Cook Boot & Clothing Co. Pty. Ltd. as Trustee for the T C Cook Family Trust (the Removal Opponent) sought to maintain registrations for trade marks 529137 and 313880 against removal proceedings initiated by Hancock Prospecting Pty Limited. The dispute concerned whether the Removal Opponent had made genuine use of these trade marks in relation to the goods and services for which they were registered during the relevant period. The matter was heard by Benjamin Goldsworthy, a Hearing Officer for Trade Marks and Designs.

The primary legal issues before the Hearing Officer were to determine whether the Removal Opponent had established sufficient use of trade marks 529137 and 313880 in connection with the registered goods and services. Specifically, the Hearing Officer had to consider whether the evidence demonstrated use in relation to retail services, as opposed to wholesale activities or use on the goods themselves, and whether the evidence sufficiently corroborated such use within the defined "Relevant Period." The Hearing Officer also had a discretion under section 101 of the relevant legislation to decide whether to remove the trade marks or allow them to remain, even if use was not fully established.

The Hearing Officer found that the evidence presented for trade mark 529137, including references to t-shirts and boot boxes, did not sufficiently demonstrate use in relation to retail services. While there was evidence of wholesale of t-shirts and some general advertising, this was not considered equivalent to use in connection with the registered retail services. Similarly, for trade mark 313880, the evidence regarding boots lacked corroboration of use within the relevant period, with general statements not being sufficient. The Hearing Officer concluded that the evidence did not show use of either trade mark in relation to the registered services or goods to the required standard.

Consequently, the Hearing Officer directed that trade mark 529137 be removed from the Register. For trade marks 527222 and 313880, amendments were ordered to narrow their scope to reflect the established use, specifically to "Footwear and clothing being t-shirts and leather belts" for 527222 and "Footwear and clothing being t-shirts" for 313880. Costs were not awarded in respect of the oppositions for 527222 and 313880 due to a measure of success for both parties, but costs were awarded against the Removal Opponent concerning trade mark 529137.