Federal Court of Australia

Symphony Holdings Limited v Skins IP Limited [2022] FCA 1238

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be allowed.

2.    The decision of the delegate of the Registrar of Trade Marks made on 1 March 2022 be set aside insofar as it relates to the Trade Marks.

3.    The Registrar be directed to register each of the Trade Marks in respect of the revised goods and services listed in Schedule A, annexed to these orders and judgment dated 18 October 2022, permitting or directing the Registrar to permit the amendment of the specifications of each Trade Mark for that purpose.

4.    The appellant may make any application for an order for costs, within seven (7) days of the date of this judgment, together with any evidence in support of that application and written submissions (not exceeding two pages in length).

5.    If no application is filed in accordance with order 4, this proceeding is deemed to be finally disposed of on the basis that no order is made as to costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

RAPER J:

Introduction

1    The appellant has appealed from a decision of a delegate of the Registrar of Trade Marks: Symphony Holdings Limited v Skins IP Limited [2022] ATMO 29 (Decision). In those proceedings, the appellant had opposed applications under s 92 of the Trade Marks Act 1995 (Cth) by the respondent for the removal of 23 trade marks registered in the appellant’s name by reason of the appellant’s purported “non-use” of those marks.

2    The appellant is a listed company in Hong Kong specialising in sports brands and retail businesses. Prior to the Decision, it was the registered owner of the following Australian trade mark registrations relevant to this appeal:

3    The respondent is a company which was incorporated in the United Kingdom on 21 August 2019 shortly before it filed the relevant non-use applications in respect of the above marks. The respondent has filed a submitting notice in this appeal and does not contest the relief sought by the appellant.

4    The delegate decided pursuant to ss 92(4)(b), 100 and 101 of the Trade Marks Act that:

(1)    Trade Mark No 995860 (“SKINS”) should remain on Register;

(2)    Trade Mark No 1106064 (“”) and Trade Mark No 1671034 (“SKINS.NET”) should remain on Register in respect of some but not all of the designated goods and services; and

(3)    the balance of the Trade Marks at issue in the opposition should be removed from the Register.

5    The appellant appeals only those parts of the Decision, including in particular [93]–[94] (where the ultimate findings were made) and Annexure C (containing the “Amendments to registrations”), in which the delegate upheld or partially upheld the respondent’s non-use applications and ordered removal of the following trade marks in respect of goods or services in the following classes:

(a)    Trade Mark No 1106064 (“”) (6064 Mark) in classes 25 and 35;

(b)    Trade Mark No 1337622 (“”) (7622 Mark) in class 18;

(c)    Trade Mark No 1614587 (“”) (4587 Mark) in class 41;

(d)    Trade Mark No 1407020 (“TEAM SKINS’”) (7020 Mark) in classes 10, 25 and 35; and

(e)    Trade Mark No 1671034 (“SKINS.NET”) (1034 Mark) in classes 18, 25, 35 and 41.

(together, the Trade Marks).

6    By the appellant’s notice of appeal, it states that, to the extent that the delegate made findings in relation to the 6064, 1034 and 5860 Marks, including at [92] and [94], in respect of goods and services in classes 10, 25 and 35 which the delegate permitted to remain on the Register, then those findings and parts of the Decision are not appealed in this notice of appeal.

7    The appellant seeks, inter alia, the following relief:

(a)    the decision of the delegate given on 1 March 2022 be set aside insofar as it relates to the Trade Marks.

(b)    the Registrar be directed to register each of the Trade Marks in respect of the revised goods and services listed in Schedule A to the notice of appeal (which is also Schedule A to this decision), and permitting or directing the Registrar to permit the amendment of the specifications of each Trade Mark for that purpose.

(c)    in the alternative to (b), an order directing the Registrar to register the Trade Marks in respect of those goods or services which the Court thinks fit.

8    This appeal comprises a de novo appeal meaning that the Court is required to determine the appellant’s opposition afresh on the basis that the grounds and evidence before the Court including evidence which was not before the Trade Marks Office. The Court must determine whether the application should succeed on its merits “albeit weight will be given to the Registrar’s opinion as that of a skilled and experienced officer”: Kenman Kandy v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494 at [21], citing Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 at 119 and 126, cited with approval in Woolworths Ltd v BP plc [2006] FCAFC 52; 150 FCR 134 at [30]. The appellant seeks registration of the Trade Marks in relation to the revised goods and services listed in Schedule A.

9    The appellant contends that there are two matters that require satisfaction. First, for each particular mark, has the mark been “used” in good faith by its registered owner during the relevant three year period between 2016 and 2019 (the relevant period) in respect of particular goods and services listed in Schedule A, noting there is a rebuttal onus in s 100(1)(c) of the Trade Marks Act regarding trade mark use. Secondly, the Court must be satisfied that it is reasonable not to remove the mark in respect of some or all of the services listed in Schedule A, even if the grounds upon which the non-use application have been upheld. This is because there is a residual discretion arising from s 101(3) and s 101(4) of the Trade Marks Act.

Evidence relied upon

10    The appellant relied on six affidavits:

(1)    Affidavit of Ronald Hyam Perlov, sworn on 24 August 2022;

(2)    Affidavit of Philip Robinson, sworn on 24 August 2022;

(3)    Affidavit of Benjamin Fitzmaurice, affirmed on 26 August 2022;

(4)    Affidavit of Michelle Gorton, sworn on 26 August 2022;

(5)    Affidavit of Robert McIntyre sworn on 31 August 2022; and

(6)    Affidavit of Christopher Butler, affirmed on 12 September 2022.

Statutory provisions

11    This appeal concerns the correctness of the respondent’s successful claim below regarding the appellant’s purported non-use of the Trade Marks.

12    Section 92 of the Trade Marks Act provides for when an application for the removal of a trade mark can be made, and is extracted as follows:

92 Application for removal of trade mark from Register etc.

(1)    Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2)    The application:

(a)    must be in accordance with the regulations; and

(b)    may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)    An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:    For prescribed court see section 190.

(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)    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 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.

Note 3:    For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.

(5)    If the right or interest on which a person relied to make a non-use application becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

13    Where an application for removal of a trade mark is opposed, the opponent is required to rebut the allegations contended in the application, as prescribed by s 100 of the Trade Marks Act, as follows:

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.

Note 1:    If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:    For file, month and registered owner see section 6.

(2)    For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before 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 in relation to those goods or services before 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 before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

Note 1:    If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:    For registered owner see section 6.

(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.

Note 1:    If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:    For registered owner see section 6.

14    There remains the discretion, despite the strictures of s 100, for the Registrar or the Court to decide to not remove a trade mark from the Register by reason of the application of ss 101(3) and (4) which are extracted as follows:

101 Determination of opposed application—general

…

(3)    If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)    Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)    similar goods or closely related services; or

(b)    similar services or closely related goods;

to those to which the application relates.

Note 1:    If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:    For registered owner see section 6.

Applicable principles regarding use

15    Part 9 of the Trade Marks Act governs the removal of trade marks from the Register for non-use.

16    “Use” of a mark for the purpose of s 92(4)(b) and 100(1)(c) must be by either the “registered owner” or an “authorised user” (as defined in ss 6 and 8 respectively). The evidence revealed that Skins International Trading AG (SITAG) was the registered owner of the Trade Marks until November 2019 and thereafter the appellant was the registered owner. Accordingly, the onus of rebutting the allegation of non-use lies with the appellant: s 100(1)(c).

17    Relevantly, a single bona fide “use” of a trade mark by a registered owner may be sufficient to rebut an allegation of non-use under s 92(4)(b): Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565; 156 IPR 1 at [101] per O’Callaghan J; Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; 107 FCR 166 at [17] per Drummond J.

18    As to what constitutes “use” is circularly described to mean “real commercial use” or “ordinary and genuine use” and not “some fictitious or colourable use” if it is to defeat a non-use application: Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; 244 FCR 557 at [120] (per Nicholas J with whom Allsop CJ agreed); Woolly Bull Enterprises at [16]. One must take care that by concentration on the verb one does not forget its place in the adverbial expression “use of the trade mark”. The focus must be on its use as a trade mark. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144, the High Court described what constitutes “use of a trade mark”, at [41]–[44]:

41.     The concept of “use” of a trade mark which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Trade Marks Act must be understood in the context of s 17, which describes a trade mark as a sign used, or intended to be used, to “distinguish” the goods of one person from the goods of others.

42.     Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth), that a trade mark indicate “a connexion in the course of trade” between the goods and the owner, the requirement that a trade mark “distinguish” goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of “goods to which the mark is applied”. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. There is nothing in the relevant Explanatory Memorandum to suggest that s 17 was to effect any change in the orthodox understanding of the function and essential characteristics of a trade mark.

43.     In Coca-Cola Co v All-Fect Distributors Ltd a Full Court of the Federal Court of Australia said [at [19]]:

“Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of “trademark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”

That statement should be approved.

44.     It can also be noted that the reference in s 17 to “the course of trade” encompasses the idea that use of a trade mark is use in respect of “vendible articles”. A mark is used only if it is used “in the course of trade”.

(Footnotes omitted).

19    The question is not one of the intention of the user, it is a question of fact, using an objective standard, where the Court must ask itself: “is the mark being used in fact as a trade mark?”: Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; 30 FCR 326 at 335, per Lockhart J. As noted by Burley J in Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 at [244], the determination of whether there has been “use” in relation to the particular registered goods and services involves the adoption of the plain meaning the consumer would use to define the product or service with which the mark was purportedly being used. The courts have expressed an aversion to drawing “fine distinctions” between the particular types of goods and services described in the trade mark specification: Justice Bennett rejected an argument that it was necessary for a trade mark owner to have used its trade mark in relation to every type of good falling within a generally-described category of good to maintain registration of those goods: Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 at [138].

20    Finally, a trade mark will be used, for the purposes of s 100(3)(a), if it has been used with “additions or alterations not substantially affecting its identity”. Whether there has been no substantial alteration to the mark requires a “side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison”: Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519 at [154] (per Kenny J).

Appeal grounds

(a)    6064 Mark

21    With respect to this mark, the appellant contends that the delegate erred, at [94] and Annexure C, in partially upholding the respondent’s non-use application in respect of the 6064 Mark in classes 25 and 35. The Court notes that there was a typographical error in that part of Schedule A concerning this mark, as annexed to the appellant’s notice of appeal – the reference to “headwear” in Class 25 was meant to be “headgear” and has been amended in Schedule A annexed to this decision.

22    The appellant particularised this ground as follows:

Particulars

(i)    The Delegate erred in finding at [32]-[33] that the 6064 Mark had been used as a trade mark only in relation to “compression garments, t-shirts, tights, shorts and undergarments” during the relevant period, and not in relation to other registered goods and services, including in particular “clothing; socks; jackets; pullovers; pants; headgear and sportswear”.

(ii)    The Delegate ought to have found that the 6064 Mark had been used as a trade mark during the relevant period in relation to each of the goods and services listed in Schedule A.

(iii)    The Delegate held that SKINS and the SKINS logo enjoyed a reputation in Australia in relation to compression garments and sportswear (at [73]) and that, in view of the likelihood of confusion and the closely related nature of registered goods and services, it was reasonable to exercise the discretion in relation to goods and services in classes 10 and 35 (at [79] and [81]).

(iv)    Having so found, the Delegate ought to have found that it was reasonable to exercise the discretion to permit the 6064 Mark to remain on the Register in the relation to each of the goods and services listed in Schedule A.

(Emphasis in original).

23    Accordingly, the appellant submits that the delegate ought to have found that the 6064 Mark should remain on the Register in the amended form in Schedule A.

24    The appellant contends that there is ample evidence to satisfy the Court that during the relevant period the 6064 Mark was used as a trade mark in respect of “clothing; socks; jackets; pullovers; pants; headgear and sportswear”. In this respect the appellant relied upon new evidence not before the delegate of historical screenshots from the www.skins.net.au domain name, generated in 2017, of various items which showed various items of clothing being offered for sale in Australia. As recognised by Merkel J in Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471; 143 FCR 479 at [43], “if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded”.

25    Consistent with the reasoning in Ward v Brodie, the appellant has established by the website screen shots that its “use” was directed towards the Australian market by the following indicators: the domain name, the fact that the products are advertised in English and were offered for sale in Australian dollars.

26    In particular, the appellant relied on the following instances of use (as revealed in the evidence):

(a)    The sale and advertising for sale of SITAG’s range of compression garments, clothing (including t-shirts, shorts, pants, jackets/pull-overs, singlets, vests, socks, bras, underwear, tights, leggings and sportswear) and accessories (including bags and headgear) under the Skins Logo at its online store <www.skins.net/au>;

(b)    The sale by SITAG’s authorised distribution agent and retailers in Australia of compression garments, clothing (including sportwear, clothing, tops, shorts, and undergarments) and accessories (bags and hats) branded under the Skins Logo, including by Statewide Sports and True Alliance;

(c)    The “packaging”, “swing tags”, “internal labels”, “cardboard boxes” and “invoices” branded under the Skins Logo in respect of SITAG’s range of compression garments, various items of clothing and accessories during the Relevant Period;

(d)    The various marketing, advertising and promotional activities conducted by SITAG, including on its website and social media accounts and through endorsement deals with prominent Australia [sic] athletes and sporting teams, advertising, promoting and marking the sale of compression garments, clothing and accessories branded under Skins Logo.

(Footnotes omitted).

27    I accept that this summary was demonstrated by the evidence.

28    The appellant also relied on the evidence of Mr Fitzmaurice, Chief Operating Officer of the SKINS division of the appellant, who deposed that the appellant was authorised to distribute products which included the SKINS logo on the product itself for all of the relevant products which are the subject of this appeal, save for Tech Fleece pants and hoodies and some T-shirts. Furthermore, his evidence established that the relevant products were sold via the www.skins.net/au website. In addition, SITAG’s Tech Fleece pants and hoodies were distributed and sold during the relevant period in plastic polybag packaging and swing tags which prominently featured the SKINS logo and SKINS.NET trade mark. A trade mark will be used “in relation to [the] relevant goods and/or services”, for the purpose of s 100(3)(c), if the mark has been used either directly on the registered goods or services, or in physical or other relation to the registered goods or services: ss 7(4)–(5), and 9. Accordingly, the use of a trade mark on packaging, labels, swing tags, product brochures, newsletters or online advertising materials, or on invoices and shipping documents for the registered goods and services constitutes use in relation to the same.

29    I am comfortably satisfied based on the evidence relied upon by the appellant and as identified in its written and oral submissions that the appellant did in fact use the mark with respect to clothing, T-shirts, tights, shorts, undergarments, socks, jackets, pullovers, pants, headgear and sportswear during the relevant period, such that it falls within Class 25. Furthermore, I am satisfied that the mark was used in the retail, wholesale and distribution of the same items by reason of the following evidence.

30    There was a significant volume of evidence adduced on this appeal (much of which was not before the delegate) that SITAG and its authorised retailers and distribution agents in Australia had used the 6064 Mark during the relevant period in respect of each of the goods and services listed in Schedule A. In particular, I was taken to the evidence of Mr Fitzmaurice at paragraphs [31] and [39]–[43], in which he deposed to when products were sold in Australia on a wholesale or distribution basis to retailers. Furthermore, there was evidence of an invoice which included the SKINS logo or the SKINS name at [43]. I was also taken to numerous tax invoices from SKINS Compression Garments Pty Limited to Statewide Sports Pty Limited in 2017, within the relevant period, which identified a large number of clothing items being sold to Statewide Sports Pty Limited with a base discount, which can be inferred to comprise a wholesale discount of 25% being applied to a number of clothing items. SKINS Compression Garments Pty Limited was a wholly owned subsidiary of SITAG as the registered owner. Furthermore, I was taken to evidence of SITAG’s sales records which included Statewide Sports Pty Limited and the extent of the sales made to that company. The evidence illustrated that during the relevant period the items of clothing were being sold on a retail and wholesale basis to a large number of Australian stores listed on their website.

31    I accept the submission of the appellant that there was during the relevant period widespread use of the SKINS logo across a broad range of clothing items, including T-shirts, tights, shorts, undergarments, socks, jackets, pullovers, pants, headgear and sportswear and the like and that such use is sufficiently broad to cover clothing generally.

32    Given the findings I have made in this regard, it is not necessary for me to consider the alternative argument which was put by the appellant, namely, that if the Court was not satisfied that there had been use of the 6064 Mark in relation to any particular good and service in Schedule A, then it is reasonable to exercise a discretion under s 101 of the Act for the 6064 mark to remain on the Register in the form proposed in Schedule A by reason of there being substantial use of the SKINS marks before, after and during the relevant period in relation to the garments about which the mark was being sought and where it was clear during the relevant period and continuing today that the appellant has a significant reputation in its SKINS marks.

(b)    7622 Mark

33    With respect to this mark, the appellant contends that the delegate erred at [93] in upholding the respondent’s non-use application in relation to the 7622 Mark in class 18, particularised as follows:

Particulars

(i)    The Delegate erred in finding at [40]-[42] that bags branded with the 7622 Mark advertised in social media posts and on its website did not involve use of that mark in the course of trade as a trade mark in Australia.

(ii)    The Delegate ought to have found that the 7622 Mark had been used as a trade mark in relation to the class 18 goods listed in Schedule A.

(iii)    To the extent that the 7622 Mark had not been used in relation to any [of] the registered goods, then the Delegate ought to have found that it was reasonable to exercise the discretion to permit the 7622 Mark to remain on the Register in relation to the goods listed in Schedule A.

(Emphasis in original).

34    The appellant submits that the delegate ought to have found that the 7622 Mark should remain on the Register in the amended form in Schedule A.

35    The appellant seeks that the registration of the 7622 Mark be maintained in Class 18 in respect of “bags; luggage; sports bags; and draw-string bags” (emphasis in original).

36    The appellant submitted that there was clear evidence in this appeal that SITAG and its authorised retailers in Australia have used the 7622 Mark during the relevant period in relation to each of the goods in Class 18 listed in Schedule A.

37    In particular, the appellant relied on the following instances of use:

(a)    The bags, back-packs, and drawing-string bags branded under the Skins Logo sold and advertised for sale by SITAG at its Australian online store <www.skins.net/au> during the Relevant Period;

(b)    The bags branded under the Skins Logo sold by SITAG’s authorised Australian retailer, Statewide Sports, during the Relevant Period;

(c)    The advertisements and posts on social media advertising and promoting the Skins range of products and accessories, including bags branded under the Skins Logo through promotional give-aways and competitions.

(Footnotes omitted).

38    The evidence revealed that the various bags illustrated in the screenshots of the Australian online store at www.skins.net/au during the relevant period involved a use of the 7622 Mark in the course of trade as a trade mark. During the course of the hearing, I was taken by the appellant’s counsel to various illustrations in the screenshots from the Australian website advertising bags for sale and the method by which they could be bought, which included evidence of the use of the Australian domain name and the fact that they were offered in Australian dollars.

39    In addition, the appellant relied on the evidence of Mr Robinson, a Director of Robree Investments Pty Limited trading as Statewide Sports, which established that during the Relevant Period products bearing the trade marks, including 7622, including bags, were sold by his stores during the relevant period.

40    By reason of the evidence tendered by the appellant at hearing, I am comfortably satisfied that the appellant did in fact use the 7622 Mark, under Class 18, in relation to bags, luggage, sports bags and draw-string bags, during the relevant period and its registration with respect to that mark under that Class should be maintained.

41    Accordingly, by reason of this finding, it is not necessary for me to determine in the alternative that, even if the Court was not satisfied that there had been a use of the SKINS logo in relation to bags during the relevant period, then it was reasonable for the discretion in s 101 of the Trade Marks Act nonetheless to be exercised.

(c)     4587 Mark

42    The 4587 Mark is registered in Class 41 in relation to various information relating to sports and sportswear. In the proceedings below the delegate upheld the respondent’s non-use application in respect of this mark. By its notice of appeal the appellant seeks the registration of the 4587 Mark to be maintained in Class 41 in respect of “providing information about sports activities or sportswear; information services in relation to sports or sportswear; education services regarding anti-corruption, anti doping, the value of sportsmanship or the spirit of competition; providing online electronic publications (non-downloadable)” (emphasis in original).

43    With respect to this mark, the appellant contends that the delegate erred at [93] in upholding the respondent’s non-use application in relation to the 4587 Mark in Class 41, particularised as follows:

Particulars

(i)    The Delegate erred in finding at [47] that the website and promotional materials did not involve use of the 4587 Mark in relation to registered services in class 41.

(ii)    Having found at [58] that the skins.net website had been used in class 41 in relation to “providing information about sporting activities”, the Delegate ought to have found that the 4587 Mark had been used as a trade mark in relation to the class 41 services listed in Schedule A, including “providing information about sporting activities”.

(iii)    To the extent that the 4587 Mark had not been used in relation to any [of] the registered services in class 41, then the Delegate ought to have found that it was reasonable to exercise the discretion to permit the 4587 Mark to remain on the Register in relation to the services listed in Schedule A.

(Emphasis in original).

44    The appellant submits that the delegate ought to have found that the 4587 Mark should remain on the Register in the amended form in Schedule A.

45    The appellant relied on the following instances of use:

(a)     The provision of information about sportwear branded under the Skins Logo on its the [sic] website and print advertorials, and the provision of information about sports and sporting events in articles, posts and blogs which prominently feature the Skins Logo on its website and social media platforms;

(b)    The provision of educational content under the Skins Logo regarding anti-corruption, anti doping, the value of sportsmanship or the spirt of competition on its website, social media platforms and packaging for its compression garments;

(c)    The provision of online electronic publications (non-downloadable), including web-articles, blogs, podcasts, newsletters and social media posts, which prominently feature the name SKINS and the Skins Logo.

(Footnotes omitted).

46    The appellant submits that by virtue of these illustrations of use they indicate that the SKINS logo has been used in a manner which communicates to consumers that SKINS is the source of trade origin of the sporting-related information and educational services provided. The appellant relied on Mr Fitzmaurice’s evidence as to the articles, podcasts and blogs educating consumers about SITAG sportswear and various sporting related topics which were conducted as branding, marketing and promotional initiatives by SITAG to increase brand awareness of the SKINS name, logo and brand and to provide an interactive platform for SITAG to better engage and interact with its consumer base and thereby drive sales.

47    In this regard I was taken to the following evidence: a screenshot (from 1 July 2017) of a compression garment for sale which included the branded logo and directly next to the item listed for sale it identifies the benefits and features of that item of clothing, including endurance performance, reduction in fatigue, and increase in circulation and muscle oxygenation. I am satisfied that this indicates “use” of the 4587 mark to provide information about sportswear.

48    In addition, my attention was drawn to examples of the branded logo being used during the relevant period to sponsor a particular team, the Brisbane Lions, and the www.skins.net website providing information about sports and sports events. In addition, I was provided with evidence of the Skins Facebook page promoting “National Rugby League legend Johnathan Thurston” giving his support to “help kick homophobia out of sport for good.” Furthermore, the unchallenged evidence of Mr Fitzmaurice was that the “Watercooler blog” on the Skins website from 2017 contained articles about “sporting values, anti-doping and sporting events”. Whilst the extracts from the Wayback machine do not contain the full extracts of the articles, it is clear from what is contained in the blog and other parts of the Skins website, that those issues appear to be routinely discussed on the website using the other marks such that it could be inferred that the same applied to the 4587 mark. To the extent that there was evidence that the website was said to be directed towards Australia, the appellant submitted that this could be inferred by reason of the evidence of Mr Fitzmaurice that, the creators of the mark were born in Australia, Australia was its biggest market, the newsletter had 90,000 Australian subscribers and a Google analytics report, between January 2016 and December 2019, revealed that there were in excess of 1.14 million unique Australian visitors to the website during the relevant period. I accept that this evidence is sufficient for it to be inferred that the logo was used within Australia.

49    Accordingly, I am satisfied that this evidence comprised evidence of “use” of the 4587 mark to provide information about sports activities or sportswear, information services in relation to sports or sportswear and education services regarding anti-corruption, anti-doping, the value of sportsmanship or the spirit of competition and providing online electronic publications (non-downloadable). By reason of this finding, it is not necessary for me to determine in the alternative whether it was reasonable for the discretion in s 101 of the Trade Marks Act nonetheless to be exercised.

(d)    7020 Mark (TEAM SKINS)

50    With respect to this mark, the appellant contends that the delegate erred at [93] in upholding the respondent’s non-use application in relation to the 7020 Mark in classes 10, 25 and 35, particularised as follows:

Particulars

(i)    The Delegate erred in finding at [61] that the packaging, website materials and social media materials did not involve use of the 7020 Mark in classes 10, 25 and 35 during the relevant period.

(ii)    The Delegate ought to have found that the 7020 Mark had been used as a trade mark during the relevant period in relation to the goods and services listed in Schedule A.

(iii)    To the extent that the 7020 Mark had not been used in relation to any [of] the registered goods and services, then the Delegate ought to have found that it was reasonable to exercise the discretion to permit the 7020 Mark to remain on the Register in relation to the goods and services in Schedule A.

(Emphasis in original).

51    The appellant submits that the delegate ought to have found that the 7020 Mark should remain on the Register in the amended form in Schedule A.

52    The 7020 Mark was registered in Classes 10, 25 and 35 in relation to, amongst other things, compression garments, clothing and retail services. In the proceedings below the delegate upheld the respondent’s non-use application in respect of this mark. By its notice of appeal the appellant seeks that registration of the 7020 Mark be maintained in Classes 10, 25 and 35 in relation to the compression garments, clothing and retail services listed in Schedule A.

53    The appellant submits that the evidence establishes that the 7020 Mark has been used in the course of trade during the relevant period in relation to at least compression garments (Class 10) and clothing (Class 25) and retail distribution and wholesale services for compression garments and clothing (Class 35).

54    The appellant relies on the evidence illustrating the following instances of use:

(a)    The sale or advertising for sale of clothing and compression garments by SITAG and its authorised retailers in Australia using packaging featuring the TEAM SKINS mark.

(b)    The advertising and promotion of SITAG’s compression garments and clothing, via the TEAM SKINS online product brochure, available on its website www.skins.net;

(c)    Various social media posts and advertising materials advertising and promoting SITAG’s compression garments and clothing under the words “TEAM SKINS.”

55    The appellant tendered a box (and an accompanying receipt) containing men’s compression shorts which displayed the TEAM SKINS logo on the side of the box and the sale date (5 March 2017), being within the relevant period (Exhibit A1). The mark appeared in the following sentence “While you’re there, join Team SKINS so you don’t miss out on the latest news, competitions and collections” (emphasis in original). This illustration revealed that the mark comprised branding to increase brand awareness and drive sales of compression garments and to encourage consumers to use the www.skins.net online store and sign up for TEAM SKINS product brochures. The TEAM SKINS newsletter, similarly involved use in the course of trade of the 7020 Mark.

56    The appellant relied again on Mr Fitzmaurice’s evidence that the TEAM SKINS newsletter advertised and promoted for sale the largest range of SKINS compression garments and clothing and was circulated approximately once every two weeks to about 90,000 Australian consumers. Furthermore, the tagline “#TEAMSKINS” appeared in various social media posts as a branding device and marketing slogan to promote the SKINS range of compression garments and sporting apparel.

57    I am comfortably satisfied, based on the evidence of the appellant, that the registration of the 7020 Mark should be maintained in Classes 10, 25 and 35 in relation to the compression garments and clothing listed in Schedule A.

58    With respect to the remaining goods for which the appellant claims use namely “t-shirts, tights, shorts, undergarments, socks, jackets, pullovers, pants and sportswear”, the appellant relies on the discretion in s 101 of the Trade Marks Act.

59    I accept that the evidence established that the 7020 Mark prominently featured the word “SKINS” and the appellant clearly has a significant reputation in the SKINS name, brand and logos. The evidence also establishes that there has clearly been some use of the TEAM SKINS mark during the relevant period.

60    Without limiting the discretionary factors that the Registrar may take into account in deciding under subsection (3) whether a trade mark should not be removed from the Register even if the grounds on which the application was made have been established (for example a lack of use of the trade mark), the Registrar may take into account whether the trade mark was used by its registered owner in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods to those to which the application relates. As identified by the Full Court in Austin Nichols & Co Inc v Lodestar Anstalt (No 1) [2012] FCAFC 8; 202 FCR 490 at [31], a relevant consideration in exercising the discretion under s 101 is whether use of the mark by another person will lead to deception or confusion.

61    To the extent that the evidence does not reveal uses in relation to particular types of clothing or accessories (save for men’s compression shorts), the appellant submits that such goods are either (i) encompassed by other more generalised descriptions in the specification (such as “compression garments” (Class 10) or “clothing” (Class 25)); or (ii) are otherwise “similar” or “closely related” to such goods. I accept this submission. I also accept the appellant’s submission that there is a risk of consumer confusion ensuing from third parties using TEAM SKINS. I have also taken into account the difficulties which the appellant has encountered in obtaining historical copies of the TEAM SKINS newsletter as a result of SITAG entering into external administration and the confined and unopposed nature of the amendments proposed by the appellant which in my view support additionally the 7020 Mark remaining on the Register in the form proposed in Schedule A.

(e)    1034 Mark (“SKINS.NET”)

62    With respect to this mark, the appellant contends that the delegate erred, at [94] and Annexure C, in partially upholding the respondent’s non-use application in respect of the 1034 Mark in Classes 18, 25, 35 and 41 particularised as follows:

Particulars

(i)    The Delegate erred in finding at [53] and [58] that the 1034 Mark had been used as a trade mark only in relation to “compression garments and sportswear” during the relevant period, and not in relation to other registered goods and services, including in particular “clothing; t-shirts; tights; shorts; undergarments, socks; jackets; pullovers; pants; headgear and sportswear”.

(ii)    The Delegate ought to have found that the 1034 Mark had been used as a trade mark during the relevant period in relation to each of the goods and services in Schedule A.

(iii)    The Delegate held that SKINS, the SKINS logo and SKINS website enjoyed a reputation in Australia in relation to sportswear and compression garments (at [73]) and that, in view of the likelihood of confusion and the closely related nature of registered goods and services, it was reasonable to exercise the discretion in relation to particular goods and services in classes 10 and 35 (at [82]-[83]).

(iv)     Having so found, the Delegate ought to have found that it was reasonable to exercise the discretion to permit the 1034 Mark to remain on the Register in the relation to the goods and services listed in Schedule A.

(Emphasis in original).

63    The appellant submits that the delegate ought to have found that the 1034 Mark should remain on the Register in the amended form in Schedule A.

64    The 1034 Mark “SKINS.NET” was registered in Classes 10, 25, 35 and 41 in relation to, amongst other things, compression garments, bags, clothing, retail, wholesale and distribution services and sporting-related information services. In the proceedings below the delegate found that registration of the 1034 Mark should be maintained in relation to all of the registered goods in Class 10, in respect of “sportswear” in Class 25 and in respect of “retail” services in Class 35 (emphasis in original). Those findings are not the subject of any appeal.

65    By its notice of appeal, the appellant seeks a broader scope of registration for the 1034 Mark than which was found by the delegate. The appellant submits that it is clear from the evidence that SITAG and its authorised retailers and distribution agents in Australia have used SKINS.NET as a trade mark during the relevant period in relation to each of the additional goods and services listed in Schedule A, including bags, luggage, sports bags and draw-string bags (Class 18); clothing, t-shirts, tights, shorts, undergarments, socks, jackets; pullovers, pants and headgear (Class 25), the retailing of sports bags, luggage, draw-string bags, clothing, t-shirts, tights, shorts, undergarments, socks, jackets; pullovers, pants, headgear and sportswear (Class 35) and various information and educational services about sports and sportswear (Class 41).

66    The appellant submits the following instances of use:

(a)     The sale and advertising for sale of by [sic] SITAG’s range of compression garments, clothing (including t-shirts, shorts, pants, jackets/pull-overs, singlets, vests, socks, bras, underwear, tights, leggings and sportswear), accessories (including bags and headgear) and sporting-related information and educational services provided at its website <www.skins.net/au>.

(b)    The “packaging”, “swing tags”, and “cardboard boxes” for the range of compression garments, clothing and accessories sold by SITAG in Australia during the Relevant Period which prominently feature the SKINS.NET trade mark;

(c)    Various marketing, advertising and promotional activities conducted by SITAG, including on its website and social media accounts and through endorsement deals with prominent Australia [sic] athletes and sporting teams, advertising, under and by reference to the SKINS.NET mark.

(Footnotes omitted).

67    The evidence revealed the use of SKINS.NET (forming part of the domain name) in the course of trade. Its use as a trade mark was in relation to a range of goods and sporting related information services which the website promotes. Consistent with reasoning and like circumstances in Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369; 163 IPR 1 at [916]–[920] per Anderson J and Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 at [140] per Burley J, that portion of the domain name functions as a trade mark. I accept that it is not merely descriptive but is used to identify a website which acted as a functioning online shopfront. There was evidence of $30 million in sales and very large numbers of visits to the website which illustrate the same. The addition of the www. prefix does not substantially affect the identity of the mark.

68    It was submitted that SKINS.NET comprised a mark by reason of the evidence that SITAG used it on packaging and labelling of its products which was said to reinforce its indication of origin. I accept this submission. A review of the evidence, particularly Exhibit A1 (the box packaging of men’s compression shorts) and the other evidence of like branding on packaging and tags in the evidence of Mr Fitzmaurice demonstrated its use as a badge of origin to attract consumers to the SKINS website and therein the goods and services provided to consumers at that website. Furthermore, the extensive use of the word “SKINS” as a brand name across all SITAG’s range of compression garments, items of clothing, accessories and various information and education services provided at www.skins.net during the relevant period involves use of SKINS.NET with additions or alterations which do not substantially affect the identity of the 1034 Mark.

69    Lastly, I accept that the evidence established its use, under and by reference to the SKINS.NET mark in various marketing, advertising and promotional activities conducted by SITAG, including on its website and social media accounts and through endorsement deals with prominent Australian athletes and sporting teams, advertising, under and by reference to the SKINS.NET mark. There are numerous illustrations in the evidence, two of which included:

70    Accordingly I am satisfied that the appellant has satisfied the Court that it did use the 1034 Mark as a trade mark during the relevant period in relation to each of the additional goods and services listed in Schedule A, including bags, luggage, sports bags and draw-string bags (Class 18); clothing, t-shirts, tights, shorts, undergarments, socks, jackets; pullovers, pants and headgear (Class 25), the retailing of sports bags, luggage, draw-string bags, clothing, t-shirts, tights, shorts, undergarments, socks, jackets; pullovers, pants, headgear and sportswear (Class 35) and various information and educational services about sports and sportswear (Class 41).

71    By reason of this finding, it is not necessary for me to determine in the alternative whether it was reasonable for the discretion in s 101 of the Trade Marks Act nonetheless to be exercised.

Conclusion

72    For the above reasons, I allow the appeal and order that the decision of the delegate of the Registrar of Trade Marks given on 1 March 2022 be set aside insofar as it relates to the Trade Marks. I will also order that the Registrar be directed to register each of the Trade Marks in respect of the revised goods and services listed in Schedule A, and permitting or directing the Registrar to permit the amendment of the specifications of each Trade Mark for that purpose.

73    I note that none of the amendments would fall foul of the requirement in s 83(1)(b) of the Trade Marks Act which provides that a Registrar may only amend particulars entered in the Register if the amendment “does not have the effect of extending the rights that (apart from the amendment) the owner has under registration”. As acknowledged by Burley J in Goodman, at [291], s 83(1)(b) does not limit the exercise by a Court of the discretion under s 101(2). It would, however, be contrary to the policy underpinning the Trade Marks Act to permit an amendment that expands the scope of a registration.

74    With respect to the question of costs, the appellant seeks its costs. I note that there has only been a submitting appearance from the respondent but, nonetheless, I will give consideration to a costs order being awarded. I give the appellant an opportunity to file a two page submission in relation to the awarding of costs seven (7) days after the date of this judgment, with the issue to be determined on the papers.

Associate:

Dated:    18 October 2022

Schedule A