Trent Lecky v Mate Communicate Pty Ltd - [2022] ATMO 163

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Trent Lecky to an application under section 92 of the Trade Marks Act 1995 (Cth) by MATE Communicate Pty Ltd for removal of trade mark number 1165398 (25) – mate – in the name of Trent Lecky

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Epiphany Law

Decision:

2022 ATMO 163

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows no use of the Trade Mark during the relevant period for a subset of goods – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the goods for which it is registered

Background

This decision is pursuant to an application made on 13 September 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by MATE Communicate Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1165398

Lodgement date

14 May 2007

Goods

Class 25: Armbands (clothing); articles of clothing made from wool; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; athletic clothing; beach clothing; belts (clothing); boys' clothing; casual clothing; children's clothing; clothing; clothing for babies; clothing for sports; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; collars (clothing); combinations (clothing); denims (clothing); girl's clothing; headbands (clothing); hoods (clothing); infants' clothing; jackets (clothing); jerseys (clothing); knitted clothing; knitwear (clothing); ladies clothing; leather belts (clothing); men's clothing; motorcyclists' clothing (other than for protection against accident or injury); ready-made clothing; ready-to-wear clothing; thongs (clothing); women's clothing; woollen clothing; wristbands (clothing); wristlets (clothing); clothing, footwear, headgear

(‘Registered Goods’)

Owner

Trent Lecky

Trade Mark

mate

(‘Trade Mark’)

2. Trent Lecky (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal and a Statement of Grounds and Particulars (‘SGP’) on 17 January 2020. The Applicant filed a Notice of Intention to Defend on 7 May 2020.

The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’). The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’). This material will be discussed in more detail below.
4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 29 January 2021 the Applicant requested a hearing by submissions and paid the appropriate fee. Following delays caused by various applications to extend the deadline to file the EIR, the matter was set down for a hearing. I was allocated to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Trent Lecky v Mate Communicate Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2022] ATMO 163
Decision Date: 20 September 2022

CaseChat Overview and Summary

Trent Lecky opposed an application by MATE Communicate Pty Ltd to remove trade mark number 1165398, which registered the mark "mate" for goods in class 25. The application for removal was brought under section 92 of the *Trade Marks Act 1995* (Cth). The hearing officer, Nicholas Smith, considered the discretion to remove the trade mark from the register.

The primary legal issue was whether the hearing officer should exercise discretion not to remove the trade mark, despite grounds for removal existing. This involved balancing the public interest in the integrity of the trade marks register against the private commercial interests of both the applicant for removal and the registered proprietor. The hearing officer was required to consider various factors relevant to this discretion, including abandonment, residual reputation, sales of goods, and the applicant's diligence in searching the register.

In reaching his decision, the hearing officer noted that while the integrity of the register is a guiding principle, private commercial interests are also relevant. He applied the principle that trade mark law balances the interests of consumers and traders. However, in this specific case, the hearing officer was not satisfied that there was any significant reputation in the trade mark for the remaining goods, given the lack of evidence of sales and marketing. Consequently, he concluded that removal would not cause consumer confusion or practically impact the opponent's interests. Upholding the importance of the register's integrity, he decided not to exercise his discretion to prevent removal.

The hearing officer ordered that trade mark registration number 1165398 be removed from the register in respect of all goods in class 25, except for hats, t-shirts, and singlets, one month from the date of the decision. As neither party was entirely successful, no order was made as to costs.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[11] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[12] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[13][11] Kowa Co Ltd v Organon [2005] FCA 1282, [92].[12] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].[13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].24. Factors that have been found relevant to the consideration of whether to exercise the discretion include:·There had been no abandonment of the trade mark;·The registered proprietor of the mark still had a residual reputation in the mark;·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;·The applicant 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;·The registered proprietor was not aware of the applicant’s sales under the mark.[14][14] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203] (Bennett J).25. In the present case I am not satisfied that there is any significant reputation in the Trade Mark for the Remaining Goods, given the almost non-existent evidence of sales and marketing of goods under the Trade Mark since it was registered. Given that, I am unpersuaded that the removal of the Trade Mark for the Remaining Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way. Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods. Decision26. The Opponent has partially established its opposition to removal. I direct that registration 1165398 be removed from the Register in respect of all Remaining Goods one month from the date of the Decision. It will remain registered for the goods listed below. If the Registrar is served with a notice of appeal before then I direct that removal 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.Class 25: hats, t-shirts and singletsCosts27. Neither party has been entirely successful in respect of the application for removal of Trade Mark 1165398. As such I make no order as to costs.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks20 September 2022

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Registration No.	1165398
Lodgement date	14 May 2007
Goods	Class 25: Armbands (clothing); articles of clothing made from wool; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; athletic clothing; beach clothing; belts (clothing); boys' clothing; casual clothing; children's clothing; clothing; clothing for babies; clothing for sports; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; collars (clothing); combinations (clothing); denims (clothing); girl's clothing; headbands (clothing); hoods (clothing); infants' clothing; jackets (clothing); jerseys (clothing); knitted clothing; knitwear (clothing); ladies clothing; leather belts (clothing); men's clothing; motorcyclists' clothing (other than for protection against accident or injury); ready-made clothing; ready-to-wear clothing; thongs (clothing); women's clothing; woollen clothing; wristbands (clothing); wristlets (clothing); clothing, footwear, headgear (‘Registered Goods’)
Owner	Trent Lecky
Trade Mark	mate (‘Trade Mark’)