Warrior Australia Pty Ltd v Warrior Sports Inc [2017] ATMO 120 (19 October 2017)


Warrior Australia opposed registration of the below Warrior Sports trade mark applications in connection with clothing (Class 25) and sports goods (Class 28).

Warrior Australia is the owner of Australian Trade Mark Registration Nos. 398525 and 398526 both for WARRIOR covering the same goods as the two opposed Warrior Sports applications.  These two Warrior Australia trade marks were initially raised as citation objections against the Warrior Sports applications, but were overcome by Warrior Sports on the basis of honest concurrent use.

The decision lists a lengthy background between the parties, but for ease of reading, and as it is not directly pertinent to the decision (aside from the details outlined later), we have not delved into those issues.

The Hearing Officer found that the Warrior Sports trade mark (shown above) was deceptively similar to the prior registered WARRIOR trade marks owned by Warrior Australia, as was the case at examination.

Also consistent with the examination stage, was Warrior Sports argument that its trade marks should proceed based on honest concurrent use.  Before considering the evidence filed, the Hearing Officer noted that the relevant date for the ‘honesty’ portion of the honest concurrent use provisions must not be when the trade mark was adopted for use in the United States, but when the trade mark was first used in Australia, which was 2009.

Given the background between the parties, the Hearing Officer was left ‘without doubt’ that Warrior Sports knew of Warrior Australia’s registrations prior to adopting its trade mark for use in Australia (as a result of Warrior Australia’s registrations being raised as citation objections against an attempt by Warrior Sports to register its trade marks in Australian in 2007).  On that basis, Warrior Sports was unable to meet the initial threshold for honest concurrent use.

Without evidence of honest concurrent use, the Warrior Sports applications were refused registration.

To view the Office decision, click here.

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