TMRW Sports, Inc v TMRW Music Pty Ltd

This decision concerns an opposition to the removal of a trade mark from the Register, brought by TMRW Music Pty Ltd (the Opponent) against TMRW Sports, Inc. (the Applicant). The dispute arose from an application for removal of the trade mark on the grounds that it was not genuinely used in relation to certain specified services. The matter was heard by Bianca Irgang, a Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the trade mark had been genuinely used in relation to all the "Partial Services" for which it was registered. This required the Hearing Officer to consider the evidence of use presented by the Applicant and to determine if it was reasonable to remove the trade mark for any of those services, or to exercise discretion not to remove it for certain services.

The Hearing Officer reasoned that while the Opponent had partially established its opposition, the evidence did not support the complete removal of the trade mark for all the Partial Services. Specifically, the Hearing Officer was not satisfied that removal was reasonable for services not related to music entertainment. Consequently, the Hearing Officer directed that the Partial Services in the registration be limited. The decision also stipulated that if a notice of appeal was served before the limitation took effect, the limitation would be stayed pending the outcome of the appeal. In relation to costs, as both parties achieved some success, the Hearing Officer ordered that each party bear its own costs.