Federal Court of Australia

Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd [2025] FCA 218

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be allowed.

2.    The decision of the Registrar of Trade Marks be set aside.

3.    The Appellant’s opposition to the Removal Action succeed in part and the Trade Mark remain registered on the Register of Trade Marks in respect of board games; games; toys and playthings; video game apparatus.

4.    The Appellant to file any submissions on the question of costs by 4 pm on 2 April 2025, not exceeding two pages.

5.    The Respondent to file any submissions on the question of costs by 4 pm on 4 April 2025, not exceeding two pages.

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

REASONS FOR JUDGMENT

BENNETT J

Introduction

1    Somers Enterprises Australia Pty Ltd (the Appellant) has been the registered proprietor of the trade mark ‘Celebrity Head’ with a priority date of 5 August 1992 (the Trade Mark). The Trade Mark was registered in class 28, being ‘Board Games and all other goods in this class excluding racquet (Racket) sports equipment, ski equipment and golf equipment.’

2    On 21 September 2021, Basefun Pty Ltd (Basefun) filed an application seeking to remove the Trade Mark from the Register of Trade Marks (the Register) for non-use under s 92(1) on the grounds set out in s 92(4)(b) of the Trade Marks Act 1995 (Cth) (the Act).  The application was successful before the delegate of the Registrar of Trade Marks (the Delegate).  This is an appeal from the decision of the Delegate pursuant to s 104 of the Act.  It is a hearing de novo (UCP Gen Pharma AG v Mesoblast, Inc (2012) 95 IPR 562; [2012] FCA 210 at [1] (Jessup J) (UCP Gen Pharma)).  While I give weight to the Delegate’s decision as a skilled and experienced person, I am required to approach the matter afresh (Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [32] (French J) (Woolworths), quoting Rowntree plc v Rollbits Pty Ltd  (1988) 10  IPR 539 at 545 (Needham J)), and to determine the merits of the application, not whether the Registrar lawfully discharged their duty (Jafferjee v Scarlett (1937) 57 CLR 115 at 126 (Dixon J)).  This fresh approach is underscored by the fact that the Appellant has filed additional evidence which adds to that which was before the Delegate in the hearing below.

3    The Appellant asks that the Trade Mark be retained on the Register in respect of a narrower description of goods and services, being: ‘board games; games; toys and playthings; video game apparatus.’  It advances two main grounds to support its contention:

(1)    first, that the Appellant has used the Trade Mark on goods covered by the Registration in the period 21 August 2018 and 21 August 2021 (the Non-Use Period).

(2)    secondly, even if it is not successful in establishing that it has used the Trade Mark on goods covered by the Registration in the Non-Use Period, I ought to exercise the discretion conferred by s 101(3) of the Act to retain the Trade Mark on the Register in the amended form.

4    Basefun filed a submitting notice on 13 June 2024.  In that notice, Basefun stated that it submits to any order that the Court may make in this proceeding and that it wishes to be heard on the question of costs.  Consequently, Basefun took no active part in the proceeding and filed no evidence.

Background facts

5    The evidence in the proceeding comprises the material filed by the Appellant, being the:

(1)    affidavit of Daryl Somers dated 12 September 2024 (the D Somers Affidavit);

(3)    affidavit of Julie Somers dated 12 September 2024 (the J Somers Affidavit); and

(4)    affidavit of Peter Knowles dated 12 September 2024 (the Knowles Affidavit).

6    The evidence establishes a number of factual propositions.  The Trade Mark was coined by Mr Daryl Somers and was first used by him on the television show Hey Hey It’s Saturday on 8 June 1991.  The Trade Mark was applied to a parlour game that featured as a recurring part of the show until 20 November 1999.  The Trade Mark was then used in a Hey Hey It’s Saturday reunion show in 2009, and during the show’s airing of a new season in 2010, until 27 November 2010.  The structure of the game became well known: the name of a celebrity is displayed above the head of each player on a headband.  Everyone other than that player can see the name of the celebrity.  Each player then asks ‘yes or no’ questions until they identify the name of the person displayed above their head.

7    In the television version, a cast member of Hey Hey It’s Saturday or a visiting celebrity would take part in the game.  They were each assigned a home viewer and a prize was awarded to the home viewer if ‘their’ contestant won.  The segment generated humour by the way in which the television contestants reacted to the various questions that were asked and the answers that they received.  In this way, the television show not only explained the rules of the game to the watching audience, it also modelled a funny and engaging version of the game.  This no doubt made the purchase of a home board game version more appealing to consumers.

8    In 1992, the Appellant entered into an agreement with Basefun to manufacture and distribute the Celebrity Head board game.  The board game was promoted on Hey Hey It’s Saturday in a range of ways, including that:

(1)    it was offered as a consolation prize for viewers whose nominated competitor was a runner up in the game;

(2)    Mr Somers would speak about the game and promote it as a way that viewers could play ‘Celebrity Head’ at home; and

(3)    footage was occasionally shown of individuals playing the board game in the course of an episode of Hey Hey It’s Saturday (generally immediately after or as part of the ‘Celebrity Head’ segment).

9    The board game mirrored the game being played on the television show.  There were some elements of the board game which came to feature in the television show: most notably the use of red hands on either side of the celebrity names:

10    The rules of the board game were generally analogous to the rules used on the television show, albeit adapted to home use.  In effect, the board game relied upon the familiarity that the audience had with the rules and operation of the game from the television show to support interest in buying the board game.  Potential purchasers of the board game were aware of how it worked, and why it was fun because they had watched it be played on a regular basis on a popular television show over many years.  The Appellant asks me to conclude that there is a connection between the television show which created the game, and the board game that mimicked it.  I agree with the Appellant’s submission in this respect.  This is an important aspect of the question of use, to which I will return.

11    The television show Hey Hey It’s Saturday stopped in November 1999.  It was revived for a short time in specials and a return season during 2009 and 2010 alongside a 50th anniversary special in 2021. While the show was airing between 1991 and November 2010, Celebrity Head was a consistent segment.

12    From 2014, the Appellant has been the registrant and operator of the website at http://www.heyhey.tv (the Streaming Site).  Consumers were able to subscribe to the Streaming Site to view full episodes and short segments of Hey Hey It’s Saturday. Some of the short segments available to view (on a paid basis) were the Celebrity Head segments.  The Celebrity Head segments were promoted over time, via sporadic Facebook posts.  There was engagement with those Facebook posts, including by people evidently resident in Australia.

13    It is not clear precisely when the board game stopped being made and marketed by Basefun. However, it is clear that in the Non-Use Period, the game was not being distributed and sold, save in a limited way through the second-hand market.  In the hearing, the Appellant (appropriately) declined to rely upon sales in the second-hand market to establish that the Trade Mark was used.

14    Mr Somers and Ms Julie Somers gave evidence in March 2017, that Mr Emanuel Mavrides (the director of Basefun) met with Mr and Mrs Somers concerning the relaunch of the Celebrity Head board game.  In the course of the meeting, Mr Mavrides on behalf of Basefun presented a redesigned Celebrity Head board game.  It appears that there were some meetings with exhibitors during a toy fair in 2017 who showed some interest a re-launch of the Celebrity Head board game.

15    In February 2020, Mr Mavrides sought permission from Somers to market a ‘new look’ Celebrity Head board game at the 2020 Australian Toy, Hobby and Licencing Fair held in Melbourne from 1 – 4 March 2020 (2020 Toy Fair). In his email of 7 February 2020, Mr Mavrides made clear that the ‘new look’ board game was what had been presented at the meeting in early March 2017, and had been the subject of some discussions at the toy fair held in 2017.

16    Basefun sought to enter into an arrangement with the Appellant ‘whereby we can say Basefun continues to have the right to the name Celebrity Head for its board game’.

17    In seeking to reach that arrangement, Basefun provided reassurance that ‘[a]s with past versions, Basefun will ensure to produce a quality game to a standard expected by Somers Carroll, the retailers and consumers’.

18    The purpose of the correspondence was to allow Basefun to ‘proceed and assess the viability in bringing the game back to the consumer’.  On 11 February 2020, a representative of the Appellant asked to see pictures of the updated packaging of the proposed board game.  In response, on 13 February 2020, Mr Mavrides provided 19 images of the ‘new look’ Celebrity Head Board game with its contents.  The 19 images were in evidence, and they show a well-developed prototype of board game.  The Celebrity Head Trade Mark was prominently displayed throughout the prototype.  The prototype also included the headband with the ‘red hands’ in reference to the original model used on Hey Hey It’s Saturday.

19    By email on 17 February 2020 Somers provided Basefun with an understanding which it could rely upon for the purposes of the 2020 Toy Fair:

We [Somers] are interested in relaunching the Celebrity Head board game and we are happy for Basefun to represent to Crown and Andrews and other exhibitors at the 2020 Australian Toy Hobby and Licensing Fair that we are in active discussions regarding the possible relaunch of the Celebrity Head board game.  Whether an agreement can be reached between Somers Group Australia and Basefun will be subject to further discussions.

20     A meeting was scheduled between the Appellant and Basefun for 28 February 2020, although it is unclear if that meeting took place.  In any event, Basefun attended the 2020 Toy Fair in March 2020 and reported back on their activities via email on 4 March 2020.  Basefun reported on a meeting with the managing director and a ‘key marketing manager’ of a potential toy distributor.

21    Basefun stated in the email of 4 March 2020 that the toy distributor considered that Celebrity Head would be the ‘preferred choice’ when compared with other guessing games in the market place because:

*    The graphics are very appealing and well presents the game.

*    The name Celebrity Head is well known to the market place and has been effectively incorporated in the graphics. …

22    Basefun reported that ‘as expected, [the managing director of the toy distributor] asked and we confirmed Basefun continues to have the right to the name’.

23    The central importance of the Trade Mark to the discussions was further highlighted in the same email, which said:

We also discussed the opportunity in entering other territories overseas and our desire to retain the name Celebrity Head. Although each territory may have an alternative preference both [executives] believe the territories they seek would welcome the name.

24    Basefun reported that, all going well, they could expect major retailers to ‘have the game on shelf in Australia and New Zealand sometime between May and July of 2021’.  Importantly, the potential distributor was ‘happy’ to launch and distribute the product without any expectation that Hey Hey It’s Saturday would be aired in the future.  The prototype was to be costed by the proposed distributor and a proposal was expected from them after that time.

25    A few days later, Basefun followed up with the Appellant to confirm the Trade Mark registration status of Celebrity Head in overseas territories.  He noted in that correspondence that:

Somers Carrol had applied for the trademark in 1992 just before we launched the game in October 1992 and I understand the IP is still protected to date in Australia.

26    The correspondence makes it clear that Celebrity Head still had substantial market recognition arising from its use as part of Hey Hey It’s Saturday.  There continued to be a connection between the use of the Trade Mark in a television setting and the board game.

27    In late July 2020 Basefun and the Appellant corresponded further.  The Appellant queried whether there remained interest in a re-release of the game, either in time for Christmas or with the 50th anniversary of Hey Hey It’s Saturday in 2021.  Basefun reported ‘major distribution issues’ likely connected to the COVID-19 pandemic.  Once again, the protection of the Trade Mark was a key issue in the correspondence.  There is no further evidence of correspondence about the proposed re-launch of the game.  The application which led to the present appeal followed in September of 2021.

The relevant law

The non-use application

28    A trade mark is defined by s 17 of the Act in the following terms:

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

29    Section 92 of the Act relevantly provides:

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:

…

(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.

30    Once the allegation of non-use is raised, the onus to establish use in the relevant period rests squarely upon the opponent.  Relevantly, s 100(1)(c) of the Act states:

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:

…

(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)).

31    A removal opponent is taken to have rebutted the allegation of non-use if it can establish the circumstances set out in s 100(3) of the Act, which relevantly states:

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

…

(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.

32    The onus to be discharged is the ordinary civil standard of proof (Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56 (Branson J)).

33    The goods for which a trade mark is registered need not be actually sold in the Non-Use Period for use to be established for the purposes of s 100(3)(a).  The use must be in good faith, which requires no more than a ‘genuine intent to use the mark for commercial purposes’ (Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd (2009) 175 FCR 26 at [56] (Tamberlin, Sundberg and Besanko JJ)).

34    A trade mark will be used for the purposes of s 100 where it is used by a party authorised to use the mark (see s 7(3) of the Act).  Section 8 sets out a non-exhaustive list of the circumstances in which a person is authorised to use the mark:

(1)    A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)    The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)    If the owner of a trade mark exercises quality control over goods or services:

(a)    dealt with or provided in the course of trade by another person; and

(b)    in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4)     If:

(a)    a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b)    the owner of the trade mark exercises financial control over the other person's relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5)    Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

35    A party will exercise control of a trade mark for the purposes of s 8 where they control the use of the trade mark ‘as a matter of substance’ (Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 at [97] (Besanko J) (Lodestar)).

36    The Appellant emphasises that it is not necessary to show extensive use of the trade mark in the relevant period.  As the Trade Mark is a word mark, ‘any aural representation of the trade mark’ is a use of the mark for the purposes of the Act (Dick Smith Investments Pty Ltd v Ramsey (2016) 120 IPR 270; [2016] FCA 939 at [36] (Katzmann J) (Dick Smith), citing s 7(2) of the Act).  Even a single use of the Trade Mark in good faith in relation to the goods in class 28 could be sufficient to resist removal (Dick Smith at [110] (Katzmann J)).  The use must be ‘in the course of trade’ although that expression is not confined to sales, it includes (Lahore JW, Patents, Trade Marks & Related Rights (LexisNexis Butterworths, 2006), vol 1A, at [60,130], cited with approval in Dick Smith at [125] (Katzmann J)):

merchandising, advertising and promotion, making offers, selecting, distributing, selling, hiring, leasing, letting out for public use, exporting, importing, repairing, processing, maintenance, servicing — all the operations of a commercial character by which a trader provides to customers for reward some kind of goods or services…

37    A use in the course of trade is broad enough to include the steps necessary for the production of the goods (Dick Smith at [135] (Katzmann J); Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517 at 520 (Gummow J) (Buying Systems)).

38    To be used in good faith, the use must be ordinary and genuine, as judged by commercial standards: a relatively small amount of use may be sufficient to constitute an ‘ordinary and genuine’ use (E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [64] (French CJ, Gummow, Crennan and Bell JJ) (Gallo) citing Electrolux Ltd v Electrix Ltd (No.2) (1954) 71 RPC 23 at 36 (Sir Raymond Evershed MR)).

39    The case of Energy Beverages v Cantarella Bros (2023) 407 ALR 473; [2023] FCAFC 44 (Energy Beverages Appeal) is relevant to the analysis in this case.  Energy Beverages contended that television commercials that remained available on platforms like YouTube and Facebook constituted use in the non-use period (Energy Beverages Appeal at [26] and [34]).  The primary judge in Energy Beverages LLC v Cantarella Bros Pty Ltd (2022) 403 ALR 299; [2022] FCA 113 (Energy Beverages) found that the commercial was a ‘passive historical snapshot of a marketing campaign’ (Energy Beverages at [201]) and that there was no longer an active promotion or use of the trade mark to promote or sell goods to Australian consumers (Energy Beverages at [203]-[204]; Energy Beverages Appeal at [37]).  The primary judge observed (at [207]) that:

TCCC uploaded, or authorised the uploading of, the MOTHERLAND commercial to YouTube and Facebook in 2011. The advertisement was also aired in 2011. This was approximately five years prior to the start of the MOTHERLAND Relevant Period. The evidence of Mr Simonetti establishes that where videos have been posted to Facebook and YouTube they simply stay online until removed. It is not apparent how their continued presence on those platforms alone is sufficient to establish genuine, commercial use by EB many years after the videos were initially posted as part of a concerted advertising campaign in 2011.

40    In that case, there was no evidence about how a person could view the video upon which the applicant relied.  There was no evidence that the video clips were made available or published or promoted in a way that could constitute a ‘use’ of the trade mark.  In Energy Beverages case there were no more than two YouTube comments in the non-use period.  Neither comment suggested any commercial engagement.  Nor was it possible to identify the location of either commenter (Energy Beverages at [221]).  In the circumstances, the primary judge was not satisfied that leaving an advertisement on a social media page, many years after a promotional campaign featuring that advertisement, is a use of the advertisement in the course of trade (see [222]).  The Full Court relevantly agreed (see Energy Beverages Appeal at [60]).  For the reasons discussed below, I am satisfied that the situation in Energy Beverages is distinguishable from the present case.

The Discretion

41    If I am not satisfied that there has been a relevant use of the Trade Mark, it would be necessary to consider the discretion conferred by s 101(3) of the Act.  Section 101(3) of the Act provides as follows:

(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.

42    The discretion conferred by s 101(3) is broad (Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490 at [69] (Jacobson, Yates and Katzmann JJ)) (Austin, Nichols). Section 101(4) identifies, without limitation, some of the matters that can be taken into account in the exercise of the discretion:

(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.

43    The core of the question is whether it is reasonable not to remove the trade mark from the register (Austin, Nichols at [28] (Jacobson, Yates and Katzmann JJ)).  The onus is borne by the Appellant as the removal opponent (Dunlop Aircraft Tyres Ltd v The Goodyear Tire & Rubber Company (2018) 262 FCR 76 at [137] (Nicholas J); Austin, Nichols at [44], citing Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526; [2010] FCA 1380 at [273] (Yates J)).  The discretion is exercised bearing in mind the aim of the Act to balance public and private interests (Austin, Nichols at [36]-[38] (Jacobson, Yates and Katzmann JJ)).  Without being exhaustive, considerations were summarised by the Full Court in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at [153(5)] (Jagot, Nicholas and Burley JJ) as follows (citations omitted):

(5)    The range of factors considered in the exercise of the discretion has included whether or not:

(a) there has been abandonment of the mark;

(b) the registered proprietor of the mark still has a residual reputation in the mark;

(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

(d) the applicant for removal had entered the market in knowledge of the registered mark;

(e) the registered proprietors were aware of the applicant’s sales under the mark;

(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services…

44    Other factors that have been identified as relevant include:

(1)    whether the removal of the mark would lead to deception or confusion (Austin, Nichols at [31] (Jacobson, Yates and Katzmann JJ));

(2)    the interests of the owner of the trade mark (Austin, Nichols at [33]-[39] (Jacobson, Yates and Katzmann JJ); Societe Anonyme des Eaux Minerales d’Evian v Yoghurt Co Pty Ltd (2012) 97 IPR 77; [2012] ATMO 53 at [33] (Societe Anonyme));

(3)    the interests of the applicant for removal (Societe Anonyme at [33]) and the interests of the registered owner (Austin, Nichols at [38]);

(4)    the public interest in maintaining the integrity of the Register (Austin, Nichols at [38]); and

(5)     whether the registered owner had taken good faith steps to use the trade mark (even where the steps were taken after the non-use application was filed) (UCP Gen Pharma at [36] (Jessup J)).

45    The analysis called for by s 101(3) is to be carried out at the time that the discretion falls to be exercised.

the present case

Was the Trade Mark used in the Non-Use Period?

46    At the hearing of the matter, the Appellant submitted its use of the Trade Mark in the Non-Use Period arose from a combination of matters.  In summary, it submitted that its promotion of board games featuring the Trade Mark on its site at URL http://www.heyhey.tv and on its Hey Hey It’s Saturday Facebook page during the Non-Use Period, at a time when the Appellant had a genuine intention to use the Trade Mark by re-launching the ‘Celebrity Head’ board game, was use of the Trade Mark.

47    This alleged use requires consideration of a number of elements, before considering whether those elements, taken together, constitute use.

The online Celebrity Head promotions

48    It is said that some instance of online engagement can be traced to Australian viewers.  In a Facebook post on 26 December 2018, Hey Hey It’s Saturday published a post on Facebook with the following text:

Need a game to play with the family on Boxing Day? Have a round of Celebrity Head! Here’s how it’s done.

49    Below the text of the post was a link to a segment of Celebrity Head.  In the clip that was posted, the board game was featured.  The post was commented upon by two individual profiles.  There was evidence before me as to the Facebook profile of one commenter.  A review of the evidence available from Facebook comfortably raises the inference that the commenter was a resident in Australia: their profile lists an Australian State as their residence, and other aspects of their profile are consistent with being Australian (for example, references to them attending an Australian high-school).  There were also 29 interactions with the post, via at least a ‘like’, ‘love’ or ‘laugh’ reaction.

50    Other Facebook posts in the Non-Use Period demonstrate a promotion of the segment Celebrity Head through clips where Mr Somers was actively promoting the game.  In this sense, it is distinguishable from the Energy Beverages cases in which old advertisements were effectively archived online; here, the Trade Mark is being actively promoted.

51    In the case of the post referred to at [47] above it appears that the clip of Celebrity Head from Hey Hey It’s Saturday is being used to actively encourage people to emulate the game in their own home.  This highlights the relationship between the television segment and the promotion of the game itself.

52    In the case of the other Facebook posts, some of the profiles of the individuals commenting were in evidence.  Those profiles give Australian locations for the commenters and provide significant circumstantial evidence supportive of the conclusion that the commenter is a resident in Australia.  For example, other posts about ANZAC Day.  Moreover, the substance of the posts indicates engagement with the online content.

53    In addition, the URL http://www.heyhey.tv was active throughout the Non-Use Period.   Evidence was adduced showcasing the number of people who played clips of the segment Celebrity Head.  Those clips are identifiable by their URL in each instance.  There were between 191 and 570 views of each Celebrity Head clip in the Non-Use Period.

54    Separately, there was evidence that users accessed episodes of Hey Hey It’s Saturday which included the Celebrity Head segment (and in many instances, active promotion of the board game) within it.  There was evidence that each of these episodes was viewed between 137 and 287 times.  While it is more difficult in these instances to be sure that a particular viewer watched the part of the episode featuring the Celebrity Head segment, I am willing to infer that at least some of the unique views in that period encompassed the Celebrity Head segment.   Similarly, while there was no evidence regarding the residency of these viewers, given the target audience of the show, I infer that the majority of viewers were in Australia.

55    If this was the only use, it could be said that the use in this manner is removed from the use of the Trade Mark in the relevant class, particularly because the board game was not being actively marketed and sold during the Non-Use Period.

The 2020 Toy Fair

56    The evidence demonstrates that there were active discussions about the reintroduction of the board game in 2017, with a prototype of the re-developed format developed at that time.  Basefun attended a toy fair in 2017 and it appears that some discussions occurred at that time. Those discussions were re-invigorated in 2020.  The evidence shows that the 2020 discussions proceeded by reference to the work that was already done in 2017 as the Appellant confirmed the prototype in 2020 remained in the form which had been inspected in 2017.

57    It follows that the online promotion of the Trade Mark in 2018 and 2019 had the effect of seeking to maintain recognition and viability for a potential re-launch of the board game.

58    The discussions in 2020 were premised upon a degree of control being exercised by the Appellant.  In particular Mr Mavrides, on behalf of Basefun, said that it would ‘ensure a quality game to a standard expected by [Somers]’.  In addition, the Appellant requested images of the redesigned Celebrity Head board game to ensure that it continued to be in the form previously identified.

59    It is clear that at the 2020 Toy Fair, Basefun was acting pursuant to an arrangement with the Appellant about the use of the Trade Mark.  The interest from potential distributors was, it appears, subject to securing the rights to the Trade Mark. The contemporaneous evidence records concern about this issue from both the distributors and Basefun.  The Appellant provided a form of wording that it was content to be communicated to potential distributors. Basefun reported back on the discussions it had at the 2020 Toy Fair, including its representations about its entitlement to the name.  The Respondent expressly acknowledged that Basefun’s use of the Trade Mark was subject to it continuing to have authorisation to use the name.

60    It is clear that the question of rights to the Trade Mark was a central issue in the 2020 discussions.  This is consistent with the kind of Trade Mark use discussed by Katzmann J in Dick Smith where her Honour said (at [157]) that:

What matters is whether the mark was being used as a trade mark to distinguish the prospective product from the products of others. (emphasis added)

61    The situation in this case can be distinguished from cases considering whether use was too preliminary in circumstances where there was no pre-existing trade-channels (see, eg, Settef SpA v Riv-Oland Marble Co (Vic) Pty Limited (1987) 10 IPR 402).  Instead, the evidence before me indicates that the board game was one of the top ten board games of 1993 and was among Target’s number one selling board games for a time.  This historical success showcases Celebrity Head had a substantial market presence in Australia as a board game.  The correspondence between Basefun and the potential distributor in 2020 make clear that the past historical success, and consequent market knowledge of the game, informed part of the motivation to pursue the discussions for the revival of the product.  The correspondence that was put into evidence showed an intention to return the game to the market within a relatively confined time period.  When considered in combination with the ongoing promotion of the game via the website in the Non-Use Period, the situation in this case can be distinguished from those cases in which the use was too preliminary.

Conclusion

62    A trade mark is  relevantly used if it is used ‘in the course of trade’ (Gallo at [51]). It need not be used much, but it must be in good faith.  In Dick Smith, two instances of use, one being a television skit and the other being a radio interview, were sufficient to show use in the statutory non-use period.  Justice Katzmann observed at [118] (emphasis in original):

the Act contemplates the registration of trade marks in relation to goods at a time before they are traded. The language used in the very definition of a trade mark in s 17 is of “a sign used, or intended to be used, to distinguish goods ... dealt with or provided in the course of trade ...”

63    It is not controversial that there need not be an actual dealing in goods bearing the trade mark to establish local use (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 433 (Moorgate)).  Preparatory steps coupled with an existing intention to offer or supply goods in trade could be sufficient to establish use (Moorgate at 433-4 (Deane J); Buying Systems at 520 (Gummow J)).  Steps antecedent to the sale or the offering for sale of the trade marked goods can constitute use (Dick Smith at [155]-[158], [237]).  In Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, Drummond J emphasised (at [40]) that:

[T]he owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.

64    Each case turns on its own facts.  However the cases make clear that there is a line between steps preparatory for sale on the one hand, and preliminary steps on the other.  The former may be use while the latter will not be.

65    The facts of this case are relatively unusual.  I accept that the promotion of the game Celebrity Head took place through the television show Hey Hey It’s Saturday while the game was sold.  As submitted by the Appellant, the creation of a game which mimicked in material respects the television segment created an inextricable link between the show and the board game.  While on the market, the board game was advertised through its association with Hey Hey It’s Saturday.

66    The Non-Use Period encompasses a time when there were no new episodes of Hey Hey It’s Saturday, and there was no sale to the public of the board game (save a very limited second-hand trade upon which the Appellant did not rely).

67    However, taken together, the evidence suggests that the Appellant ‘used’ the Trade Mark in the Non-Use Period because:

(1)    the Trade Mark was used both aurally and visually in the Non-Use Period by activities online which showed Celebrity Head clips to members of the public that included Australians.  Those clips included the active promotion of the board game.  They were not merely archived.  On at least a few occasions in the Non-Use Period, they were actively promoted.  This included one occasion in 2018. where the Facebook page published a post encouraging people to play Celebrity Head in their homes; and

(2)    there were advanced discussions for the re-launch of the board game through discussions with distributors at the 2020 Toy Fair.  The interest in the board game was informed by market knowledge of the Trade Mark.  While they did not go ahead, there was a clear (and on the evidence uncontested) intention to bring the board game to the market within a relatively short space of time.

68    Basefun attended the 2020 Toy Fair, not the Appellant.  The evidence makes clear that the discussions concerning the product and the Trade Mark proceeded on the basis of the authorisation sought from and provided by the Appellant in the lead up to the event.  The inspection of the proposed prototype via photographs underscores the control (including quality control) exercised by the Appellant as a matter of substance, such that I am satisfied that use by Basefun can be taken to be use by the Appellant (ss 7(3), 8 of the Act; see RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (2022) 168 IPR 293; [2022] FCA 1042 at [110] (Rofe J)).

69    The combination of the online activity and the discussions before, during and after the 2020 Toy Fair are sufficient to constitute ‘use’ in relation to vendible goods.  The board game which bore the Trade Mark was marketable even though not yet tradable (Dick Smith at [117]-[118], [125]).  The intention to re-launch the board game was clear from the evidence before me. While not strictly relevant, I note that in reaching these conclusions, I have had the benefit of more extensive evidence about Australian access to the online activity of the Appellant than was available to the Delegate.

70    For these reasons, I would allow the appeal.

71    The Appellant also relied upon the separate ‘use’ of the Trade Mark as part of its online activity promoting the Trade Mark on its website and Facebook page and the authorised presentation of the Trade Mark at the 2020 Toy Fair.  Given my conclusions as to the combined effect of these matters, I have not separately considered whether the individual elements relied upon would also reach the necessary threshold.

The exercise of the discretion

72    I was asked in the alternative to exercise my discretion under s 101(3) of the Act not to remove the Trade Mark from the Register.  If I am wrong in my conclusion as to use, I would nonetheless exercise my discretion to retain the Trade Mark on the Register.

73    The factors relevant to the exercise of my discretion are set out above (at [42]-[43]). Based on the evidence presently before me, I have balanced the relevant factors.  In doing so, I am conscious that the discretion is to be exercised recalling the purpose of the Act to balance public and private interests.  The key factors which are relevant to my discretion include:

(1)    The evidence establishing a substantial recognition of both Hey Hey It’s Saturday and the Trade Mark in the marketplace.  It is evident a strong association exists between the two.  That being so, a risk of consumer confusion is present, if the Trade Mark were applied to a product that was not affiliated with the Appellant.  That risk of confusion in the marketplace is a matter that is significant.  Relatedly, newspaper articles about Hey Hey It’s Saturday after the Non-Use Period refer to the upcoming Hey Hey It’s Saturday 50th anniversary special, and specifically mention the Celebrity Head segment.  No effort is made in the articles to explain the game. That the existence and content of the game is assumed knowledge is consistent with it having a strong reputation that could contribute to consumer confusion if the Trade Mark were removed from the Register.

(2)    The Trade Mark owner coined the Trade Mark and has developed its reputation from non-existence to its present state of prominence.  It has considerable interests in the Trade Mark.  That interest is underscored by the fact that the Trade Mark was registered under the now-repealed Trade Marks Act 1955 (Cth).  The Applicant submitted that the transitional provision in s 234 of the Act conveyed upon the Trade Mark a certain limited immunity from revocation actions, which it would lose if a new registration was sought.

(3)    There is no evidence before me as to the position of the applicant for removal and their interest in the removal of the Trade Mark.  I therefore ascribe that factor little weight, beyond noting that there must have been some interest sufficient to motivate the application in the first place.

(4)    It is clear that the Appellant has not abandoned the Trade Mark.  The use of the Trade Mark remains active through Facebook and the Hey Hey It’s Saturday website, both of which are actively maintained.  The evidence discloses multiple thousands of views of episodes via the website, many of which were of episodes including (or featuring only) the Celebrity Head segment.  The longevity of the segment as a part of Hey Hey It’s Saturday tends to suggest it was a popular segment, and it is not unreasonable to infer that at least some of the individuals viewing old episodes online watch the Celebrity Head segment.  This is a matter which is consistent with the Trade Mark not having been abandoned and with it retaining residual reputation.

(5)    As noted above, there is a clear connection between the television show Hey Hey It’s Saturday and the board game.  There was plainly use of the Trade Mark in the context of re-runs of the television show, even while the board game was not actively being manufactured.  The relationship between the game and the television show, in combination with the ongoing promotion of the television show through the various internet channels, are another factor that weighs in favour of retaining the Trade Mark on the Register.

74    Taken together, I consider that these are compelling factors in favour of the exercise of the discretion to retain the Trade Mark.  The Applicant for removal made no effort to put forward evidence or submissions identifying countervailing considerations.  Nonetheless, I have noted their apparent interest in the removal, evidenced by having commenced the proceedings before the Delegate.  I give some weight to that interest.  I note that there has not been a re-launch of the Board game.  However overall, the factors I have identified weigh in favour of the Trade Mark being retained on the Register.

Conclusion

75    The appeal should be allowed.  I am satisfied that the Appellant used the Trade Mark in Australia during the Non-Use Period in relation to the goods for which it was registered.  Even if I were not so satisfied, I would exercise my discretion to order that the Trade Mark remain on the Register, in the amended form sought by the Appellant in its Originating Application.

76    I will hear the parties as to costs.

Associate:

Dated:    21 March 2025