The applicant is in advanced negotiations with Bravado Holding AG to take assignment of a number of its BRAVADO trade marks worldwide and provide consent where needed. The parties had almost reached a resolution and the draft agreement, and draft letters of consent pertaining to the Australian citations had been sent to counsel for the owners for execution.

However, in April 2025, the applicant found out that there are issues with this agreement after receiving advice from a local Chinese agent (via a phone call).

The global agreement intended to result in Bravado Holding AG retaining "BRAVADO DESIGNS" marks, however Chinese practice does not allow multiple parties to own similar marks for the same goods or services. Specifically, article 42 of Trademark Law of China provides all similar or identical marks designating similar or identical goods must be assigned simultaneously. We attach extracts of articles around this point.

On receipt of advice that all Bravado Holding AG's rights would have to be assigned in China, the draft agreement could not be signed. We also attach a copy of this document for reference solely in support of these submissions.

The parties are currently re-negotiating the terms of the global trade mark agreement and considering alternative options. A conclusion is expected to be reached within the next three months.

In my opinion, there are several inconsistencies or at least a lack of clarity regarding the situation with Bravado Holding, based on the statements and declarations from previous attorneys supporting various extension requests. My understanding from the declarations provided in support of the extension applications for some years was that the Applicant had an agreement with Bravado Holding but the written submissions of the current attorney suggests that there is no agreement, rather '[T]he parties had almost reached a resolution'. If a global agreement exists, I would expect it to be evidenced or at least informed of the execution date with some details about the terms. Furthermore, it seems unlikely that a global agreement would be negated due to an issue in a single country like China. There is no information about the situation in other countries or even how many countries are involved.
It is also unclear when the Applicant became aware of the problem in China. The Applicant's attorney first mentioned an issue in China in October 2024, but the current attorney's submissions state that the issue did not come to light until a phone call in April 2025. Either way, this is long after the amendment to registration 2032142 in December 2023 when the Applicant claimed it had an agreement with Bravado Holding, so I am unsure what transpired between December 2023 and either October 2024 or April 2025. It is also apparent from the articles filed with the written hearing submissions that the law in China affecting the agreement between Bravado Holding and the Applicant is not new or a change in practice. If an agreement had been reached by December 2023, as claimed by the Applicant's attorneys at that time and in subsequent extension applications, I cannot understand why the issue in China took so long to be discovered or how it affects the situation in Australia.
If the parties are still negotiating and have not agreed on terms of co-existence, given the time already taken, I have no confidence that an agreement will be reached in the extended period if I grant the April EOT. The China Agreement has been drafted assuming Bravado Holdings will now agree to assign all of its trademarks in China. I understand that they have not yet agreed to do so and I do not have sufficient information to assess the likelihood of such agreement being forthcoming.
There is a public interest in matters being decided without unnecessary delay. Whilst complex negotiations over a prolonged period can constitute 'special circumstances',[7] I am not persuaded that the present situation is extraordinarily complicated nor that the Applicant has been diligently pursuing acceptance of the Applications. Even if the April EOT is granted, this will not allow sufficient time for the Applicant to address the citation of Hey Clothing's registration 556710 (although I acknowledge that deferment could be requested after the filing of any application to remove registration 556710 for non-use).
The Applicant's arguments that the Applicant will suffer 'unjust harm' by the loss of priority date if I refuse to grant the April EOT and that no third party will be disadvantaged, are also not persuasive. There is no evidence before me that the Applications have not blocked any subsequent application nor deterred a third party from applying for a similar mark. Also, the priority date could have been preserved by filing divisional applications for those goods and services to which the citations apply, thereby allowing the Applications to proceed to acceptance for the other goods and services (presumably at least those in classes 9, 16 and 41) which would also have allowed the Applicant a considerably longer period to continue negotiations with Bravado Holding. The fact that the Applicant did not preserve its priority date by adopting this strategy does not mean that an extension of time should now be granted.
In all the circumstances, I am not satisfied that there are special circumstances which justify the granting of the April EOT.

Accordingly I refuse the extension of time requests which are the subject of these proceedings.

Class 9: Pre-recorded audio tapes, discs and cassettes, video tapes, discs and cassettes, digital audio and audio video tapes and discs, CDs, DVDs, laser discs, and phonograph records featuring music and entertainment; theatrical and musical sound and video recordings; virtual reality game software; downloadable ring tones, music, mp3 files, graphics, games, images and videos for wireless communication devices; downloadable music, mp3 files, graphics, computer games, images and videos; computer game software, tapes, cartridges and cassettes; video game software, tapes, cartridges and cassettes; cell phones and cell phone accessories; sunglasses; and mouse pads; video game cartridges

Class 16: Books and magazines in the fields of music, entertainment, art and/or culture; address books; appointment books; pens; calendars; greeting cards; post cards; pen and pencil cases; pencil sharpeners; pens; pencils; date books; bumper stickers; decals; note pads; stickers; rubber stamps; tattoos; posters; trading cards; and stationery; money clips made of precious metal

Class 25: Bandannas; bathing suits; belts; blouses; body suits; footwear; shoes; ties; coats; dresses; vests; gloves; gowns; hats; caps; hosiery; jackets; pajamas; pants; robes; scarves; shorts; shirts; visors; skirts; halloween costumes; suspenders; ear muffs; sweat shirts; sweat pants; sweat jackets; sweaters; t-shirts; tank tops; socks; tops; wrist bands; and childrens' clothing, namely, infantwear, headwear, footwear, jackets, sweaters, coats, skirts, shirts, t-shirts, tank tops, blouses, dresses, shorts, pants, bathrobes, cloth bibs, booties, coveralls, creepers, ear muffs, hosiery, tights, jumpers, leggings, hats, mittens, night gowns, overalls, pajamas, rompers, shawls, shoes, socks, swim wear, sweat pants and sweat shirts

Class 35: Advertising and promotion services and related consulting services; advertising and publicity services; promotion services, namely promoting the interests of musicians, singers, songwriters, musical performers and artists; computerized on-line ordering relating to general merchandise and general consumer goods; computerized on-line ordering services in the field of music; computerized online retail store services all relating to CDs, cassettes, DVDs, clothing; computerized on-line gift ordering services which matches the gift giver's requirements with the gift recipients wants and needs; conducting an on-line tradeshow exhibition, in the field of music, musical concerts and videos; mail order catalog services all relating to CDs, cassettes, DVDs, clothing; organization of promotions using audio-visual media; preparing audio visual presentations for use in advertising; arranging and conducting trade show exhibitions in the field of music and entertainment; arranging and conducting fairs and exhibitions for business and advertising purposes; promoting and conducting trade shows in the field of music; promoting the concerts of others; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with concerts and musical events; promoting the goods of others by preparing and placing advertisements in an electronic magazine accessed through a global computer network; providing business information about the goods and services of others via a global computer network; and subscriptions to books, reviews, newspapers or comic books; computerized online retail store services, on-line retail store services and retail store services available though computer communications and interactive television all relating to apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, MP3 records, automatic vending machines and mechanisms for coin operated apparatus, data processing equipment and computers, recorded media, computer hardware and firmware, computer software, software downloadable from the Internet, downloadable electronic publications, compact discs, digital music, telecommunications apparatus, computer games equipment adapted for use with an external display screen or monitor, mouse mats, mobile phone accessories, contact lenses, spectacles and sunglasses, pre-recorded audio tapes, discs and cassettes, video tapes, discs and cassettes, digital audio and audio video tapes and discs, CDs, DVDs, laser discs and phonograph records featuring music and entertainment, theatrical and musical sound and video recordings, virtual reality game software, downloadable ring tones, music, mp3 files, graphics, computer games, images and videos for wireless communication devices, downloadable music, mp3 files, graphics, computer games, images and videos, computer game software, tapes, cartridges and cassettes, video games software, tapes cartridges and cassettes, cell phones and cell phone accessories, paper, cardboard, printed matter, photographs, stationery, printed publications, books and magazines in the fields of music, entertainment, art and/or culture, address books, appointment books, pens, calendars, greeting cards, post cards, pen and pencil cases, stickers, leather and imitations of leather, animal skins, hides, trunks and travelling bags, handbags, rucksacks, purses, umbrellas, parasols and walking sticks, whips, harness and saddlery, clothing, headgear, footwear, games and playthings, gymnastic and sporting articles, electronic game equipment, electronic games ( hand held with for playing), stand alone video game machines, hand held unit for playing video games, pinball-type games, arcade-type electronic video games, pinball machines, gaming equipment, namely poker chips, dolls, doll accessories and clothing, baby rattles, bath toys, beach balls, action figures and accessories therefore, electric action toys, children's multiple activity toy, Christmas tree ornaments, costume masks, kites, musical toys, pet toys, plush toys, puppets, puzzles, stuffed dolls and animals, swim floats, target games, toy action figure, toy banks and sporting goods, namely golf clubs, baseballs, baseball bats, footballs, basket balls and soccer balls

Class 41: Production of television and radio programs; distribution of television and radio programs for others; production and publishing of music; providing online entertainment, namely providing sound and video recordings in the field of music and music based entertainment; entertainment services, namely providing online non-downloadable prerecorded musical sound and video recordings via a global computer network; fan clubs; development and dissemination of educational materials of others in the field of music and entertainment; radio entertainment production and distribution; audio and sound recording and production; record production; videotape production; production of motion picture films; distribution of motion picture films; television program syndication; entertainment in the nature of ongoing television programs in the field of music and entertainment; entertainment, namely a continuing music and entertainment show distributed over television, satellite, audio, and video media; publication of books and magazines; entertainment in the nature of ongoing radio programs; entertainment in the nature of live concerts and performances by musical artists and groups; entertainment services, namely personal appearances by musical groups, musical artists and celebrities; entertainment services in the nature of performances rendered by musical artists through the medium of television, radio, and audio and video recordings; entertainment services, namely recorded performances by musical artists; educational and entertainment services, namely, production and presentation of television shows, sports events, fashion shows, game shows, music shows, award shows and comedy shows before live audiences which are all broadcast live or taped for later broadcast; entertainment services, namely, providing multi-media entertainment featuring musical performances, musical videos, related film clips and photographs via a website; entertainment services, namely, providing on-line reviews of music, musical artists and music videos; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment services namely live, televised and movie appearances by a professional entertainer; conducting entertainment exhibitions in the nature of music festivals; entertainment services, namely, conducting exhibitions in the field of music and the arts; organizing exhibitions for entertainment purposes featuring music and the arts; and publishing of web magazines; distribution of music; distribution of musical sound recordings and video recordings; preparing audio-visual displays in the field of music

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] Full details are set out in Annexure A of this decision

[3] From this point, the Applications proceeded in parallel and hence any reference to an action on one application is a reference to the same action on the other application.

[4] Richard Hall, Re [1997] ATMO 69 (Hearing Officer Murray).

[5] Davison M and Horak I, Shanahan's Australian Law of Trade Marks and Passing Off (Lawbook Co., 7th ed, 2022), [15.1995].

[6] Wrangler Apparel Corp v Australia Professional Rodeo Association Inc [1996] ATMO 55 (Hearing Officer I. Forno).

[7] Harvey Comics Inc [2001] ATMO 77 (Hearing Officer I. Forno).

Marks Regulations 1995

Bravado International Group Limited [2025] ATMO 101 (3 June 2025)

Bravado International Group Limited [2025] ATMO 101 (3 June 2025)

At a glance

Court

Decision date

Source

Judgment (24 paragraphs)

Legislation Cited (2)

Cases Cited (1)

Bravado International Group Limited [2025] ATMO 101 (3 June 2025)