Ya-Ya Shirt Company Holding B.V. v YAYA CO., Ltd

Ya-Ya Shirt Company Holding B.V. (the applicant) sought to cease protection for certain goods under registration number 1389000 for the trade mark "YAYA" (the trade mark) in the name of YAYA CO., Ltd (the opponent). The applicant contended that the opponent had not used the trade mark for a significant number of the goods covered by the registration during the relevant period. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the Registrar of Trade Marks had erred in exercising their discretion under regulation 17A.48C of the *Trade Marks Regulations 1995* (Cth) to maintain protection for the trade mark across all goods for which it was registered, despite evidence of use only for a subset of those goods. Specifically, the Court had to determine if the opponent had demonstrated sufficient use of the trade mark for all the goods listed in the registration to warrant the continuation of protection for the entire registration.

Justice Nicholas Smith found that the opponent's evidence clearly demonstrated use of the trade mark during the relevant period, but this use was confined to a subset of the goods for which the trade mark was registered. The Court held that the Registrar's discretion under regulation 17A.48C was not appropriately exercised in maintaining protection for all goods when use had only been established for some. The legal principle applied was that for protection to continue for all goods, use must be demonstrated for all those goods, or a compelling reason for non-use must be provided.

Consequently, the Court ordered that protection for the trade mark "YAYA" under registration number 1389000 should cease for those goods in respect of which use had not been proven.