21 December, 2016
Spruson

HBI Branded Apparel Enterprises, LLC v Fratex Industria Comercio [2016] ATMO 89

HBI Branded Apparel Enterprises, LLC v Fratex Industria Comercio [2016] ATMO 89

Fratex Industria Comercio applied for the removal of the below trade mark on the grounds of non-use.

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HBI Branded Apparel opposed the removal of its registration, which covers ‘fabric’ in Class 24 and ‘clothing, footwear and headgear’ in Class 25.

In its evidence, the opponent led examples of its use of the above trade mark during the relevant non-use period to the extent that the Hearing Officer was ‘satisfied that the opponent has discharged its evidentiary onus with regard to its use of the Trade Mark for ‘clothing in nature of sportswear and active apparel’.  However, the opponent had not shown use in relation to the remaining Class 24 and Class 25 goods for which it is registered.

The opponent argued that the Registrar’s discretion should be applied and the remaining goods be allowed to remain in the registration on the basis that it has made use of ‘similar goods’.  In support of this argument, the opponent noted:

  • case law wherein athletic footwear and sporting clothing were considered ‘similar goods;
  • examples of other traders manufacturing both ‘fabric’ and ‘clothing’; and
  • that the stores at which its goods are sold also sell clothing, footwear and headgear.

The Hearing Officer decided that it was appropriate to exercise the Registrar’s discretion and refuse to restrict the registration given that the registered trade mark has been in use since 1973 and that the use has been significant.  As a result of this, and the similarity of the goods, the Hearing Officer came to the view that ‘in the event that another party were to adopt the same or similar mark to use with fabrics, athletic footwear or headgear, there is a real likelihood that consumers would consider that such goods were those of the opponent.

The mark is to remain on the Register for all of the goods covered.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.


TRACEY BERGER

Principal / Trade Mark Attorney
Trade Marks Team
Sydney, Australia
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DANIEL WILSON

Associate / Trade Mark Attorney
Trade Marks Team
Sydney, Australia

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