Not so swole – removal of trade marks for non-use

In the recent case of Swole Gym Wear Group Pty Ltd v Swole O’Clock Ltd [2019] FCA 685, Swole Gym Wear Group (Applicant) applied for an extension of time to file a notice of appeal for the removal of their trade mark 1702160, which was registered for the word “SWOLE” in class 14, from the Register of Trade Marks pursuant to s92(4)(a) of the Trade Marks Act 1995 (Cth)(Act).

Background to the proceedings

Swole O’Clock (Respondent) sells bodybuilding watches and the Applicant fitness apparel.   The Applicant wrongly attempted to enforce trade mark rights against the Respondent on the basis of its trade mark 1610881 registered in class 25.  The delegate for the registrar did not consider the Respondent’s submitted evidence of prior use of the “SWOL” mark on wristbands as sufficient, as the wristbands were not a similar product to watches.

Application for extension on appeal

The Applicant applied for an extension of time to file a notice of appeal in the Federal Court based on being self-represented at the time of the decision (removal of the trade mark by a delegate of the Registrar) and was unaware evidence of subsequent use of their mark was admissible to support intention to use it.

Steward J refused the application for an extension.  His Honour considered the Applicant’s excuse for lateness due to needing to find appropriate legal representation to be unconvincing [21].  Almost two (2) years had elapsed since the Respondent applied for removal of the Applicant’s mark in 2017 and the Applicant remained unrepresented and no evidence had been presented that the Applicant could not afford legal representation.  His Honour, also considered the extension should not be granted as the case was bound to fail.

His Honour considered that the Applicant would not be able to rebut the allegation it did not intend to use the mark in good faith pursuant to s92(4)(a) of the Act.  Steward J accepted that subsequent use can be probative in assessing intention as at the date of application, but such use here was not sufficient to prove this intention.

Application for removal of trade mark from Register

Section 27(1)(b) of the Act provides that a person may apply for registration of a trade mark where they are using or intend to use the trade mark in relation to the specified goods or services.

Section s92(4)(a) of the Act provides that a person may apply to remove a trade mark from the Register for non-use where

…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’:

  • to use the trade mark in Australia; or
  • to authorise the use of the trade mark in Australia; or
  • 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 non-use application relates and that the registered owner:

  • has not used the trade mark in Australia; or
  • 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;

Intention to use mark in good faith

Steward J considered the requirements  for rebutting an allegation under s92(4) of the Act, applying the test in Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd (2009) 175 FCR 26 at [56] (Liquideng), as requiring “…a demonstration of genuine intent to use the mark for commercial purposes”.  His Honour affirmed the low threshold applied in Liquideng for this test, from Aston v Harlee Manufacturing Co (1960) 103 CLR 391 of “…the very act of applying for a trade mark is prima facie evidence of an intention to use it” and concluded that “…the applicant had failed to show that in June 2015 it genuinely intended to use the trade mark “SWOLE” in relation to watches it would sell.”

His Honour considered, as did the primary judge before the appeal in Optical 88 Ltd v Optical 88 Pty Ltd (2011) 197 FCR 67 (Optical), that the Applicant’s evidence of intended use was “sparse” as was the case in Optical, albeit  the Applicant’s Statement of grounds and particulars (of July 2017) included that the watches were “possible products for sale” in August 2014.  However, Steward J ultimately concluded that any intention to use the mark in respect of watches did not go past the possibility of selling them.

In the Optical case on appeal the Judges affirmed the primary judge’s decision and the principles in Aston v Harlee Manufacturing Company (1960) 103 CLR 391 and stated at [88] that it was not “…necessary that the applicant’s intention be to use the mark “immediately or within any limited time” but that  “…Nothing in Aston v Harlee suggests, however, that “general intention” to use the mark “at some future but unascertained time” might suffice…”

In an added twist of fate for the Applicant, the Respondent has since rebranded from Swole O’clock to S-Force as of last month.

Takeaways

  • Only register your trade mark in classes of goods or services for which you genuinely intend to use the mark. Speculative registration may risk opposition.
  • You cannot enforce trade mark rights against third parties in respect of goods or services for which your mark is not registered.
  • Intention of possible use of the mark in respect of goods or services is insufficient evidence of intended use.

Links and further references

Related articles by Dundas Lawyers

Can you infringe a trade mark by exporting a product?

Sensis v Senses

Should you trademark your business’ name or its logo?

The importance of using your trade mark

Legislation

Trade Marks Act 1995 (Cth)

Cases

Aston v Harlee Manufacturing Co (1960) 103 CLR 391

Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd (2009) 175 FCR 26

Optical 88 Ltd v Optical 88 Pty Ltd (2011) 197 FCR 67

Swole Gym Wear Group Pty Ltd v Swole O’Clock Ltd [2019] FCA 685

Further information

If you need advice on any intellectual property dispute please contact me for a confidential and obligation free discussion:

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
Telephone: (07) 3221 0013 | Mobile: 0419 726 535
e: mburrows@dundaslawyers.com.au

 

Disclaimer

This article contains general commentary only. You should not rely on the commentary as legal advice. Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Dundas Lawyers
Street Address Suite 12, Level 9, 320 Adelaide Street Brisbane QLD 4001

Tel: 07 3221 0013

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