TMRW Sports, Inc v TMRW Music Pty Ltd
[2025] ATMO 97
•26 May 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by TMRW Music Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by TMRW Sports, Inc. for the partial removal of trade mark number 1845927 (9, 16, 35, 41, 45) – TMRW – in the name of TMRW Music Pty Ltd
Delegate: Bianca Irgang Representation: Opponent: Wayne Covell and Robin Covell of Worthy of the Name
Applicant: Shauna Ross of counsel instructed by MBIP Patents, Trade Marks and Designs
Decision: 2025 ATMO 97
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal - Opponent’s evidence does show use of the Trade Mark during the relevant period on limited services - no obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be partially removed from the Register.Background
This decision is pursuant to an application made on 19 July 2023 under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by NexGen Sports Group, Inc which later changed its name to TMRW Sports, Inc. (‘Applicant’) to partially remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect some of the services for which the trade mark is registered in class 41, that is, the application is for partial removal of the trade mark.
Registration No. 1845927 Lodgement date 26 May 2017 Services Class 41: Distribution (other than transportation) of audio recordings; Distribution (other than transportation) of sound recordings; Sound recording services; Arranging of music performances; Arranging of music shows; Arranging of musical entertainment; Live music services; Music performance services; Music publishing services; Music recording studio services; Musical entertainment services; Musical performance services; Musical performances; Organisation and conducting of dance, music and other entertainment festivals; Organisation of musical events; Production of music shows; Providing digital music (not downloadable) from the Internet; Recording of music; Advisory services relating to entertainment; Arranging of entertainment; Booking of entertainment; Club entertainment services; Entertainment; Live entertainment; Live entertainment production services; Management of entertainment events; Management of entertainment services; Night club services (Entertainment); Organisation of entertainment events; Organising events for entertainment purposes; Organising of entertainment; Organising of entertainment and social events; Production of live entertainment; Provision of live entertainment; Provision of recording studio facilities; Recording studio services; Live show production services; Production of audio and/or video recordings, other than advertising; Production of musical recordings, other than advertising; Production of sound recordings, other than advertising; Entertainment information; Fan club services (entertainment); Organisation of promotions (entertainment events); Providing information, including online, about education, training, entertainment, sporting and cultural activities; Ticket agency services (entertainment); Publication of music; Arranging and conducting of concerts; Arranging of concerts; Concert services; Management of concerts; Music concert services; Musical concert services; Organisation of live shows; Presentation of live performances; Production of live performances; Providing online electronic publications (not downloadable); Music festival services
(The underlined services in class 41 are those the Applicant seeks to remove)
Owner TMRW Music Pty Ltd Trade Mark TMRW
(‘Trade Mark’)
Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
TMRW Music Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 18 September 2023 along with the Statement of Grounds and Particulars (‘SGP’) on 16 October 2023. The Applicant filed a Notice of Intention to Defend on 22 November 2023.
The evidence filed in this matter is the following:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Brian Lawrence Lee, inhouse lawyer for the Opponent (‘Lee 1’)
22.02.24
BL-1 to BL-44 including confidential annexures BL-12, BL-19 to 31, BL-33, BL-38, BL-41 and BL-43.
Timothy David McGee, Director and Chief Executive Officer of the Opponent
22.02.24
TM-A to TM-B and Confidential Annexure
Wayne Covell, Solicitor and Trade Marks Attorney for the Opponent
23.02.24
WC-A to WC-E
Evidence in Answer
Chris Murvin, General Counsel and Secretary for the Applicant
30.05.24
CM-1 to CM-4
Jennifer Ann Mackie, Trade Marks Attorney and Special Counsel for the Applicant (‘Mackie’)
1.06.24
JAM-1 to JAM-5
Evidence in Reply
Brian Lawrence Lee (‘Lee 2’)
5.08.24
BL-45 to BL-52
Timothy David McGee
5.08.24
Nil
Wayne Covell
31.07.24
WC-F to WC-G
Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 28 August 2024 the Opponent requested an oral hearing and paid the appropriate fee. The matter was set down for a hearing on 14 April 2025. The Opponent filed its written submissions on 31 March 2025 (‘Opponent’s Submissions’). The Applicant filed written submissions on 7 April 2025 (‘Applicant’s Submissions’).
I am a delegate of the Registrar and I heard the matter on 14 April 2025 via videoconference. At the hearing, Shauna Ross of counsel instructed by MBIP Patents, Trade Marks and Designs appeared for the Applicant. Wayne Covell and Robin Covell of Worthy of the Name appeared for the Opponent. I will now decide the matter on the basis of the following relevant material and the evidence listed earlier in this decision:
·The Application for Removal;
·The Notice of Intention to Oppose and SGP;
·The Applicant and Opponent’s oral and written submissions.
The Relevant Provisions
Part 9 deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 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:
(a) any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services);
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.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 19 June 2023 (‘Relevant Period’).
I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.
[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(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 opposed application relates ( relevant goods and/or services ); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.[…]
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
(b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:(i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.
I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]
[2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.
In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.
The Applicant has applied for the partial removal of the Trade Mark and the services that the Applicant seeks removal for are:
Class 41: Advisory services relating to entertainment; Arranging of entertainment; Booking of entertainment; Club entertainment services; Entertainment; Live entertainment; Live entertainment production services; Management of entertainment events; Management of entertainment services; Organisation of entertainment events; Organising events for entertainment purposes; Organising of entertainment; Organising of entertainment and social events; Production of live entertainment; Provision of live entertainment; Provision of recording studio facilities; Recording studio services; Live show production services; Production of audio and/or video recordings, other than advertising; Production of musical recordings, other than advertising; Production of sound recordings, other than advertising; Entertainment information; Fan club services (entertainment); Organisation of promotions (entertainment events); Providing information, including online, about education, training, entertainment, sporting and cultural activities; Ticket agency services (entertainment); Providing online electronic publications (not downloadable); (‘Partial Services’)
I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5]
[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).
[5] Act s 7(3).
The principles regarding when a trade mark has been used as a badge of origin were summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Selfcare’), in which the High Court noted the following:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]
[6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
Discussion
Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. To successfully oppose the application for removal the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).
[7] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).
If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.
Use of the Trade Mark in the Relevant Period
Ms Ross, legal Counsel for the Applicant, argued that none of the Opponent’s evidence of use
of the Trade Mark is sufficient to rebut the allegation of non-use as it is use of a different mark to the Trade Mark. Ms Ross also states that in any event, the evidence of use is demonstrated by third parties with an unknown relationship with the Opponent. She states there is insufficient evidence to demonstrate that these third parties are authorised users in respect of the alternate trade marks pursuant to the Act. Additionally, Ms Ross states that any use demonstrated is limited to the Music industry rather than the broad entertainment industry and that the partial removal of the Trade Mark would not impact the Opponent’s use on the services of interest to it.
Firstly, in addressing the Applicant’s argument that there are various entities using TMRW trade marks which are not demonstrated to be authorised users of the Trade Mark, I turn to the Opponent’s evidence and the ASIC printouts in exhibit BL-2 accompanying Lee 1.
The ASIC current and historical company extracts for the Opponent demonstrate company name changes from Bodren Pty Ltd (2003 – 2005) to Ministry of Sound Australia Pty Ltd (2005-2017) to TMRW Music Pty Ltd (2017 – present). I note that the Directors are Tim McGee and Richard Mergler. This similar pattern is seen in the other ASIC company extracts for Etc Etc Music Pty Ltd, Soapbox Events Pty Ltd, Soapbox Holdings Pty Ltd, 120 Publishing Pty Ltd, Crown Rights Management Pty Ltd and Tricky Pty Ltd. Most of the companies have had name changes over the years but share common Directors as well as having interests in various companies. The interconnectedness of the companies is further strengthened by the shared insurance details contained in Confidential exhibit BL-3 accompanying Lee 1.
The Applicant has pointed out the Opponent’s evidence contains many references to TMRW Agency, TMRW Management, TMRW Events and TMRW Music Group and there were no searches or evidence provided as evidence in support by the Opponent as to who owns or operates those businesses/companies.
Ms Mackie deposes at Mackie [5] to searches that she conducted of the ASIC register and the Australian Government ABN Lookup website for those names. Ms Mackie did not locate any company or business name for TMRW Agency, TMRW Events and TMRW Music Group and the company name for TMRW Management Pty Ltd that was identified did not appear to have anything to do with the Opponent. Ms Mackie puts into the evidence the search results at exhibit JAM-4[8] which show no relevant results.
[8] see pages 56-57 which show no entries for TMRW Agency, TMRW Events or TMRW Music Group.
Ms Ross pointed out that in the evidence in reply, Mr Lee in Lee 2 at [4] deposes to the ABNs of TMRW Music Group, TMRW Agency, TMRW Events and TMRW MGMT but that he did not put into evidence any documentary proof that these ABNs relate to TMRW Music Group etc. Ms Ross asserts that a strong inference for that glaring omission is that these ABNs were not associated with the name TMRW Music Group, TMRW Agency, TMRW Events or TMRW MGMT until after the evidence in answer was filed and thus, after the relevant date.
In assessing this situation, I am reminded of Golden Cala Trading Est v Florian Mack (‘Golden’)[9] where it was upheld in that decision that a License Agreement could not act retrospectively to make first use by Sky Optical use by the Holder. While the Golden decision is not analogous to the situation before me, it does provide some guidance on the requirements for an Authorised User.
[9] [2020] ATMO 173 (Hearing Officer Wilson).
In Golden, the Hearing Officer was faced with a License Agreement between Sky Optical and the Holder which was dated in 2018 and purported to act retrospectively to mean that any use of the Golden trade mark by Sky Optical in 2015 was taken to be use by the Holder. The Hearing Officer was faced with the same requirements for an Authorised User under section 8 of the Act that I am, but this is where the similarities end. In Golden, the Holder asserted that Sky Optical was the Holder’s ‘corporate alter ego’ but there was insufficient evidence provided by the Holder to establish what relationship the Holder actually had, if any, with Sky Optical at the purported time of first use of the trade mark.
In the situation before me, Exhibit BL-2 accompanying Lee 1 demonstrates an interconnected web of companies with shared directors. Additionally, Exhibit BL-6 contains copies of screenshots from the website through the WayBackMachine™ which make mention of the update of the name to TMRW Music from Ministry of Sound. Additionally, these screenshots also contain a plethora of different trade marks in addition to the Trade Mark as being badges of origin for various TMRW Music companies under the title of ‘Our Companies’ as seen below:
[10]
[10] Exhibit BL-6 accompanying Lee 1 being a print out from the Opponent’s website from the WayBackMachine dated 24 February 2021.
The Applicant has focused on TMRW Music Group, TMRW Agency, TMRW Events and TMRW MGMT as not directly listed in the ASIC printouts or found by Ms Mackie in her Australian Government ABN Lookup website searches and a lack of proof of ownership of the Social Media accounts through the Opponent’s evidence. However, the above demonstrates that the Opponent, as do many other companies, will shorten, use a contraction or adopt trading names or use trade marks that do not completely reflect the names registered with ASIC but do act as a badge of origin for the goods and services they offer. This is a market reality. I note McGee 1 [21] avers that after the Ministry of Sound brand and Ministry of Sound recordings were sold to Sony Music Entertainment UK globally, Ministry of Sound Australia Pty Ltd and its associated companies announced that as a result the Australian operations would rebrand as TMRW Music group with all future recordings to be released subsequently on the label and brand TMRW music instead. This corresponds with the ASIC print out in BL-2 accompanying Lee 1 which demonstrated the name change of the company from Ministry of Sound Australia Pty Ltd to TMRW Music Pty Ltd in 2017.
I refer to the authority in Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’)[11] which concerned two companies. The first, Trident Foods, held certain trade marks and was a wholly owned subsidiary of the second company, Manassen. The companies had common directors. The Court stated:
The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trademarks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks … In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. This is not a case like Lodestar in which there was no relationship between the owner and user of the marks beyond a licence. This case is at the other end of the spectrum. As Trident Foods submitted, it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand. The fact that this must also have been Manassen’s purpose simply confirms the unity of purpose between the corporate entities. But unity of purpose is not inconsistent with the existence of control in a case such as the present.
[11] [2019] FCAFC 100.
I am satisfied that the authority in Trident is applicable to much of the situation before me. There is a clear unity of purpose with the Opponent and the various companies that are outlined in the ASIC print outs. These companies are widely publicized through the Opponent’s website and through the various social media accounts, most of which bear the Trade Mark. I believe, on the balance of probabilities, that the claim in Lee 1 [33] that the website and social media accounts belong to the Opponent is not inconsistent with the evidence before me. There is a unity of purpose between the various corporate entities being to maximise sales and to enhance the value of the brand. While there is no clear proof which one of the entities owns the social media accounts or website, it is likely that whichever of the entities own them, they are under the control of the Opponent. Thus, use of the Trade Mark or any substantively identical mark would be use authorised by the Opponent as per section 8 of the Act.
Regardless of this, there is evidence provided by the Opponent and related entities which may also be assessed to determine whether the Trade Mark had been used during the relevant period. I reiterate that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b).[12]
[12] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
In regard to the second concern raised by the Applicant that the Opponent has not used the Trade Mark as registered, I turn to section 7 of the Act which states:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
The Opponent’s registered trade mark is the plaintext four letter combination TMRW. A close consideration of the Opponent’s evidence does show that the Opponent has used the Trade Mark along with a number of more stylized variants being the examples below:
‘Variant 1’ ‘Variant 2’
When I compare the respective trade marks with the plain text Trade Mark side-by-side, I am satisfied that the Opponent’s use of the above Variant 1 ‘TMRW Music’ would not be considered an alteration which would substantially affect the identity of the registered Trade Mark. The trade marks are the same four letters which are easily read as T M R W. Apart from the addition of a common and descriptive word MUSIC when attached to musical entertainment services. As such, I take use of the above Variant 1 by the Opponent to be use of the Trade Mark. [13]
[13] I will refer to the Trade Mark and Variant 1 collectively as the ‘Trade Mark’ for ease of reference throughout the decision. .
When it comes to Variant 2, I am not persuaded it does not have alterations which would substantially affect the identity of the registered Trade Mark. Given its new structure with the letters TM atop the RW, it is possible that Variant 2 would be pronounced differently and viewed quite differently to the Trade Mark. I do not consider use of Variant 2 as use of the Trade Mark.
Finally, I turn to the Applicant’s main contention, that the use of the Trade Mark that is demonstrated in the evidence is limited to music entertainment services. The Opponent has argued that it has used its Trade Mark on all the Partial Services during the relevant period and that music is embedded in the vast majority of entertainment services available such as sporting events, movies, theatre productions and magic shows[14] which all utilize music.
[14] These are examples of entertainment services for illustrative purposes and not an exhaustive list.
Turning to the Opponent’s evidence of use, the Opponent claims to have used its Trade Mark on its website twrw.com.au[15], social media[16], YouTube[17], Facebook[18], Instagram[19], Tik Tok[20], Spotify[21], Events[22], Legal documents, Invoices[23], Financial statements, contracts, company email addresses (@tmrw.com.au)[24], company email signatures, stationary, letters and business cards, press releases[25], media articles[26], marketing materials[27], advertising campaigns[28], sponsorship[29], music and video credits[30], apparel worn by staff at events, downloadable content, physical media, physical posters[31] and awards.
[15] Exhibit BL-6 accompanying Lee 1
[16] Exhibit BL-7 accompanying Lee 1
[17] Exhibit BL-9 accompanying Lee 1
[18] Exhibit BL-7 accompanying Lee 1
[19] Exhibit BL-8 accompanying Lee 1
[20] Exhibit BL-10 accompanying Lee 1
[21] Exhibit BL-11 accompanying Lee 1
[22] Exhibits BL-13 and BL-14 accompanying Lee 1
[23] Confidential Exhibit BL-12 accompanying Lee 1
[24] Confidential Exhibit BL-12 accompanying Lee 1
[25] Exhibit BL-16 accompanying Lee 1
[26] Exhibits BL-15 and BL-16 accompanying Lee 1
[27] Exhibits BL-13 and BL-14 accompanying Lee 1
[28] Exhibits BL-14, BL-17 and BL-18 accompanying Lee 1
[29] Exhibit BL-7 accompanying Lee 1
[30] Exhibit BL-9 accompanying Lee 1
[31] Exhibits BL-13 and BL-14 accompanying Lee 1
The Opponent has particularly referred me to its evidence of involvement in sporting events such as golf[32], cricket[33], surfing[34], basketball[35], soccer, AFL[36], rugby[37], rugby league[38], horse racing[39], motor car racing[40] and motorcycle racing[41]. I note that the Opponent has arranged musical acts to take place at these events.
[32] Confidential Exhibit BL-25 and Exhibit BL-42 accompanying Lee 1
[33] Confidential Exhibit BL-25 accompanying Lee 1
[34] Confidential Exhibit BL-25 accompanying Lee 1
[35] Confidential Exhibit BL-25 accompanying Lee 1
[36] Confidential Exhibit BL-25 accompanying Lee 1
[37] Confidential Exhibit BL-22 accompanying Lee 1 and Exhibit BL-52 accompanying Lee 2
[38] Confidential Exhibit BL-22 accompanying Lee 1 and Exhibit BL-52 accompanying Lee 2
[39] Confidential Exhibit BL-25 accompanying Lee 1 and Exhibit BL-49 accompanying Lee 2
[40] Confidential Exhibits BL-22, BL-25 and BL-27 accompanying Lee 1
[41] Confidential Exhibit BL-22 accompanying Lee 1 and Exhibit BL-52 accompanying Lee 2
The Applicant has counter argued that a musical act booked to play at a sporting event does not transform the Opponent’s music centric services into some broader sport related entertainment services. The Applicant further stated:
The broad-brush approach taken by the Opponent is impermissible in a non-use application. At the core of a non-use application, is the principle described by the High Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at [22] of ensuring “purity of the Register”. Consistent with that principle, the TMRW Registration should only remain for the services that were in fact offered by the Opponent during the relevant period (if any). The authorities establish that if a registration is capable of being limited to reflect the use demonstrated, without resorting to drawing “fine distinctions”, then it should be so limited unless sufficient reasons to leave the registration unamended are established. There are no relevant fine distinctions proposed in the application and no demonstrated reason to leave the registration unamended in the face of non-use.
I agree with the Applicant. Careful consideration of the Opponent’s evidence does demonstrate significant use of the Trade Mark on a wide variety of music acts and the promotion of those music acts. While I note the Opponent has engaged in sporting events to raise money for charity[42], this is common practice for many businesses and their employees and I am not satisfied that it constitutes use of the Trade Mark on sporting events in the marketplace. Overwhelmingly, the Opponent’s evidence demonstrates that the Opponent’s entertainment services are focused on the music industry and not on other forms of entertainment. While some of the Opponent’s artists under one of its labels have created music which is often played at sporting events or are engaged to play at sporting events[43] , the Applicant is correct that this does not transform the Opponent’s music entertainment services into sports entertainment.
[42] Exhibit BL-47 accompanying Lee 2
[43] Exhibit BL-47 accompanying Lee 2
The Opponent has argued that the Opponent has shown extensive continuous use in the Relevant Period in relation to all the Partial Services. The Opponent states it is not necessary to show use in ‘every conceivable subcategory of the relevant registered goods’.[44] ‘Some latitude is to be permitted’[45] and the question is not to be ‘considered with an eye to fine distinctions between goods on the Register’.[46] Bennett J in Pioneer Computers Australia Pty Limited v Pioneer KK held:
In order to maintain the registration of a mark in respect of a category of goods, it is not necessary to establish that the mark was used on every type of product which might come within that particular term or description of goods. For example, registration with respect to clothing should not be removed if the owner does sell a range of clothing but does not sell, for example, swimwear or ties.[47]
[44] Global Electrical Supplies Pty Ltd v Internet Group d.o.o Beograd [2024] ATMO 151 [38]; see also Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135 [138] (Bennett J).
[45] Global Electrical Supplies Pty Ltd v Internet Group d.o.o Beograd [2024] ATMO 151 [38]; Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 [146] (Burley J).
[46] Global Electrical Supplies Pty Ltd v Internet Group d.o.o Beograd [2024] ATMO 151 [38]
[47] Pioneer [2009] FCA 135 [138]; see also Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 [188] (Stewart J); and Global Electrical Supplies [2024] ATMO 151 [38] citing Wolff, at fn 28, noting an appeal allowed in [2021] FCAFC 8, but not on this principle.
However, I am not persuaded by this reasoning. Entertainment services encompass a massive and very broad international industry. Music is a particular and large portion of the entertainment industry but in no way is it the defining and major focus of what would constitute the entertainment industry. Music is broad reaching in that it can be incorporated into various entertainment venues for ambiance or to form a portion of the entertainment services on offer for an event, however, just because music is involved does not make the event a musical event. A consumer seeking to buy concert tickets to view a favorite musical artist is unlikely to mistakenly purchase tickets to a golf tournament because their favorite artist’s music has been licensed to be played at the event to contribute to the ambiance. Nor is someone seeking attend a dance party featuring a favorite DJ going to purchase a gym membership because the spin class has paid royalties to play the DJ’s music.
The case before me is not analogous to the cases the Opponent has drawn my attention to. It is not making fine distinctions between entertainment services to be satisfied that sports entertainment services, while able to incorporate musical performances, would not be considered music entertainment. Rather, I am satisfied that numerous entertainment services can exists side by side in a massive and diverse industry which changes and evolves according to new tastes by consumers, innovations in and developments in technology and entertainment.
I am satisfied that the Opponent has used the Trade Mark on the Partial Services only in relation to music entertainment.
Obstacles to use
An Opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the Relevant Period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’. The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[48]
[48] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) [2001] FCA 261, [47] (Drummond J)
The Opponent has claimed it has used the Trade Mark and has no need to argue that there was an obstacle to use of the Trade Mark. I agree with the Opponent that is has demonstrated use of the Trade Mark during the Relevant Period on music entertainment.
I am not satisfied that there were any circumstances that were an obstacle to use pursuant to s 100(3)(c).
Registrar’s Discretion
To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the remaining Partial Services.[49] The burden of persuasion falls in this regard falls on the Opponent.[50]
[49] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
[50] Ibid.
In coming to a decision I refer to CUB Pty Ltd (formerly Fosters Australia Ltd) v Elixir Signature Pty Ltd[51], and the factors to be considered when making a decision whether or not to exercise of the Registrar’s discretion were:
(a) There had been no abandonment of the trade mark;
(b) The registered proprietors of the mark still had a residual reputation in the mark;
(c) There had been sales by the registered proprietors for goods for which removal was sought since the relevant period ended;
(d) The applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and
(e) The registered proprietors were not aware of the applicant’s sales under the mark.
[51] [2013] ATMO 74 (Hearing Officer Windsor).
The Opponent has argued:
The Opponent has ongoing continuous use of TMRW since 2017 in relation to entertainment related goods and services in classes 9, 16 and 35. Indeed, the partial removal application does not challenge the Opponent’s registration and use of TMRW in relation to various entertainment related services in class 41 as well as similar and closely related goods and services in classes 9, 16 and 35.
In the recent decision Global Electrical Supplies Pty Ltd v Internet Group d.o.o Beograd[52] the opponent established use for most of the relevant electrical goods in class 9 and the Registrar’s discretion was exercised to retain the registration for “similar” unused goods. As observed by the Delegate:
Justice Bennett commented in Pioneer that the factors in favour of maintaining trade marks on the Register under section 101 were less to do with the protection of those trade marks and their proprietor and ‘more to do with the public interest’. The Opponent has argued that if I am not satisfied that the Opponent has used the Trade Mark for all of the Registered Goods, I should exercise my discretion not to remove the Trade Mark for any goods for which the mark has not been used given that the Opponent has ‘promoted, advertised and gain a significant reputation in its electrical products sold under the trade mark’ by virtue of its use of the Trade Mark for many years. The Opponent points to its sales revenue and advertising expenditure and submits that its interests would be adversely impacted by the removal of the Trade Mark from the Register ‘given its long and established use’ of the mark. The Opponent has clearly not abandoned the Trade Mark and has used the mark (or a mark with additions or alterations not affecting the identity of the Trade Mark) since at least 2013 for a broad range of electrical components and other goods such as ventilation fans and tools on a reasonably significant scale in terms of sales revenue. In the present case, I am most persuaded by the public interest in consumers not being confused and by the fact that I consider the Unused Goods to be similar to the Used Goods. In my opinion, electrical cables, electrical communication apparatus/cables and electrical leads are similar goods to the goods for which the Opponent has established use of the Trade Mark in the Relevant Period. The Unused Goods are likely to be sold through the same trade channels to the same class of consumer, for the same or similar purpose to the Used Goods. Moreover, it is it is not necessary to show use in relation to ‘every conceivable subcategory of the relevant registered goods’. ‘Some latitude is to be permitted’ and the question is not to be ‘considered with an eye to fine distinctions between goods on the Register’. Given the broad range of electrical components for which the Opponent has used its mark and the similarity of the Used Goods and Unused Goods, I am of the view that it is in the public interest and appropriate to exercise my discretion not to remove the Unused Goods from the registration.
[52] Global Electrical Supplies Pty Ltd v Internet Group d.o.o Beograd [2024] ATMO 151 (Hearing Officer Berger).
However, I am not persuaded by this argument. The Opponent’s argument that musical entertainment is so similar to the rest of the entertainment industry is not analogous to the situation above. The entertainment industry and what may be considered entertainment services is a vast and broad category. Ultimately, a customer looking for particular musical entertainment service is unlikely to accidentally purchase tickets for different entertainment such as an art exhibition, book reading, toddler dance performance or live science show. These are all forms of entertainment and while music could be incorporated into them, it would not make those other entertainment services musical entertainment. This is because the primary purpose and intent behind these example entertainment services was not to offer music entertainment to their customer. These are not similar services which would usually be provided to the same customer through the same trade channels. It is not a case of having an eye for fine distinctions should the Partial Services be limited to music entertainment.
The Opponent has also argued that because of the reputation it has in the Trade Mark that use by the other parties of that Trade Mark on other entertainment services would cause confusion in the marketplace. The Applicant has argued:
…there is no evidence of actual confusion. There is cogent evidence that the parties operate in very distinct industries. The submission that there is a likelihood of confusion by the use of TMRW with respect to music and TMRW SPORTS with respect to sport should not be accepted. Taking the Opponent’s evidence at its highest, the “large overlap” to which it refers could only really be in relation to the Opponent booking music acts to play at sporting events. With respect, the likelihood of confusion arising in those circumstances is so remote. Consumers are accustomed to the different source of services where a music act is playing at a sporting event. There is a vanishingly small risk that someone listening to Delta Goodrem sing at the NRL will think there is any connection whatsoever between service providers. Further, the likelihood that the consumer would even be faced with the TMRW and TMRW Sports marks in those circumstances is just not made out on the evidence. What the Opponent does appears to be more “behind the scenes” and not consumer facing. That further reduces the likelihood of confusion.
I agree with the Applicant. The Opponent’s evidence demonstrates that it has significant use within the music entertainment industry which is where its business interests exist. The Applicant has also argued that the remaining services claimed by the Trade Mark (that it does not seek removal for) would cover those services that the Opponent has demonstrated use of the Trade Mark on, so removal of the Partial Services in total should occur. I do not agree. The Opponent, having demonstrated use of the Trade Mark on music entertainment services which are covered by the broad claims in the Partial Services, has successfully defended the removal application from that subset of the Partial Services regardless of whether or not those services may also be included under other broad terms in the remaining services of the Trade Mark.
I am cognisant of the public interest in the Register reflecting those trade marks which are in use but balancing the relevant considerations and noting all of the evidence before me, I am not satisfied that it is reasonable remove the Trade Mark for all the Partial Services. Nor am I satisfied it is reasonable to exercise the discretion not to remove the Trade Mark for those Partial Services which are not related to music entertainment.
Decision
The Opponent has partially established its opposition to removal. Accordingly, I direct that the Partial Services in registration number 1845927 be limited in the following way:
Class 41: Advisory services relating to music entertainment; Arranging of music entertainment; Booking of music entertainment; Club music entertainment services; Music Entertainment; Live music entertainment; Live music entertainment production services; Management of music entertainment events; Management of music entertainment services; Organisation of music entertainment events; Organising events for music entertainment purposes; Organising of music entertainment; Organising of music entertainment and social events; Production of live music entertainment; Provision of live music entertainment; Provision of music recording studio facilities; Music recording studio services; Live music show production services; Production of music audio and/or video recordings, other than advertising; Production of musical recordings, other than advertising;
Production of sound recordings, other than advertising;Music entertainment information; Music Fan club services (entertainment); Organisation of promotions (music entertainment events); Providing information, including online, abouteducation, training,music entertainment, sporting and culturalactivities; Ticket agency services (music entertainment); Providing online electronic publications for musical entertainment (not downloadable);If the Registrar is served with a notice of appeal before then I direct that limitation (partial removal of the Partial Services) shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.
Costs
Both parties have requested costs in this matter. However, as both parties have been successful to some extent I determine that each party should bare its own costs.
Bianca Irgang
Hearing Officer
Delegate of the Registrar of Trade Marks
30 May 2025
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