Symphony Holdings Limited v Skins IP Limited

• Jurisdiction: Australia Federal only
• Judgment Date: 18 October 2022
• Neutral Citation: [2022] FCA 1238
• Date: 18 October 2022
• Court: Federal Court

Federal Court of Australia

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

Appeal from:	Symphony Holdings Limitd v skins IP Limited [2022] ATMO 29
File number:	NSD 196 of 2022
Judgment of:	RAPER J
Date of judgment:	18 October 2022
Catchwords:	INTELLECTUAL PROPERTY – the appellant appeals the decision of a delegate of the Registrar of Trade Marks – where the appellant had opposed the respondent’s applications under s 92 of the Trade Marks Act 1995 (Cth) for the removal of trade marks registered under the appellant’s name – appeal with respect to part of the unsuccessful opposition – appeal allowed
Legislation:	Trade Marks Act 1995 (Cth) ss 6, 7(4), 7(5), 8, 9, 92, 83(1)(b), 92(4)(b), 100, 100(1)(c), 101(3), 101, 101(2), 101(3)(a), 101(3)(c), 101(4)
Cases cited:	Austin Nichols & Co Inc v Lodestar Anstalt (No 1) [2012] FCAFC 8; 202 FCR 490 Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144 Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369; 163 IPR 1 Jafferjee v Scarlett[1937] HCA 36; 57 CLR 115 Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; 30 FCR 326 Kenman Kandy v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494 Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; 244 FCR 557 Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519 Symphony Holdings Limited v Skins IP Limited [2022] ATMO 29 Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565; 156 IPR 1 Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471; 143 FCR 479 Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; 107 FCR 166 Woolworths Ltd v BP plc[2006] FCAFC 52; 150 FCR 134
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	74
Date of hearing:	13 September 2022
Counsel for the Appellant:	Mr E Thompson
Solicitor for the Appellant:	Gorton IP
Solicitor for the Respondent:	The respondent filed a submitting notice

ORDERS

		NSD 196 of 2022
BETWEEN:	SYMPHONY HOLDINGS LIMITED Appellant
AND:	SKINS IP LIMITED Respondent

order made by:	RAPER J
DATE OF ORDER:	18 OCTOBER 2022

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:

   Reg. No.	Trade Mark	Class(es)	Short Title	Non-Use Application filing date
   1106064		10, 25, 28, 35	6064 Mark	23 August 2019
   1337622		18	7622 Mark	23 August 2019
   1614587		41	4587 Mark	23 August 2019
   1407020	TEAM SKINS	10, 25, 35	7020 Mark	23 August 2019
   1671034	SKINS.NET	10, 18, 25, 35, 41	1034 Mark	5 February 2020

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:

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

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

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

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

5. Trade Mark No 1671034 (“SKINS.NET”) (1034...