2025 ATMO 201

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) application for removal - intent to use inherent in filing of Trade Mark application - opponent asserts its intention at the filing date to use the Trade Mark as well as providing evidence of use of the Trade Mark - Trade Mark to remain on Register in its current form

1. This decision is pursuant to an application made on 28 February 2022 under ss 92(4)(a) of the Trade Marks Act 1995 (Cth) ('Act') by Cards Against Humanity, LLC ('Applicant') to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Class 16: Training guides in the form of printed matter; Printed matter for educational purposes

John Anderson as The Trustee for LPRJ Family Trust & Peter Cunningham as The Trustee for LPRJ Family Trust

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.
2. John Anderson as The Trustee for LPRJ Family Trust & Peter Cunningham as The Trustee for LPRJ Family Trust ('Opponent') has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 13 April 2022 and a Statement of Grounds and Particulars ('SGP') on the same day. The Applicant filed a Notice of Intention to Defend on 22 July 2022.
3. The parties filed the following evidence in this matter:

Peter Joseph Cunningham, Trustee of the LPRJ Family Trust ('Cunningham declaration')

Nicholas Markos, Chief Operating Officer of the Applicant ('Kim declaration')

Lachlan Brown, Attendee at Pitch Camp workshop ('Brown declaration')

Jessica Harris, Attendee at Pitch Camp workshop ('Harris declaration')

Ryan Purcell, Attendee at Pitch Camp workshop ('Purcell declaration')

Hugo Freemantle, Attendee at Pitch Camp workshop ('Freemantle declaration')

1. The entirety of the EIA, including publicly available information such as the public use of the Applicant's trade marks or the contents of national trade mark registries, is claimed to be confidential. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent's statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent's wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter's request (made within several declarations) at face value, that would be the end of these matters. > > This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity. If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.
3. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without hearing. After some delay, the Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee. As a result, the matter has been allocated to a delegate of the Registrar for a decision based on the written record.
4. I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:
   • The Application for Removal; and
   • The Notice of Intention to Oppose and SGP.

1. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

92 Application for removal of trade mark from Register etc.

(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:

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

1. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

100 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:

(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or

(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or

1. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2] In Blount Inc v Registrar of Trade Marks, Branson J observed:

Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[3]

1. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

1. Though the onus is, in terms of s 100, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[4] Fullagar J observed:

[...] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on ... a motion to expunge, the burden must rest on ... the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

1. While this observation was made in proceedings under the Trade Marks Act 1955 (Cth), where the onus was on 'the person aggrieved' (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[5] the Registrar's delegate Mr Forno said:

Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

1. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(a),[6] but if a single act of use is relied upon then it should be established by 'if not conclusive proof, at any rate overwhelmingly convincing proof'.[7]
2. In addition, the issue of whether the Opponent is using the Trade Mark honestly or is seeking to take advantage of the reputation of the Applicant does not bear on the ultimate question under s 92(4)(a) of the Act. In Edwards v Liquid Engineering 2003 Pty Ltd, Gordon J stated (with emphasis added):

Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together.[8]

1. As addressed by Gordon J[9] above, an action under s 92 of the Act is not the appropriate place to determine whether the use of the Trade Mark is honest or with subjective good intentions. That question must be litigated in an action for cancellation brought under ss 62A (or other grounds for opposition) and 88 of the Act.

1. The Opponent's EIS in this matter consists of a declaration by the co-owner of the mark who states that the Opponent had a good faith intention to use the Trade Mark in Australia at the time of registration. The Cunningham declaration gives evidence that the Opponent sought to use the Trade Mark as part of a set of training games used with its clients. The declaration attaches invoices for the game creation, design and printing of cards. It also gives evidence of the use of the printed cards as part of training workshops conducted by the Opponent in 2021 and 2022. In particular, the Opponent has created a business (run through a related entity) known as Pitch Camp which provides presentation skills training workshops, and gives examples of the use of the Trade Mark in connection with training material offered by Pitch Camp as part of its training workshops.
2. The EIR consists of four declarations from attendees at Pitch Camp workshops who received training material (cards) from the Opponent bearing the Trade Mark. Each of the declarations annex cards bearing the Trade Mark with statements written by the attendees used as part of the training they received at Pitch Camp.
3. In response the EIA gives evidence that the Applicant is the owner of all intellectual property in the enormously popular CARDS AGAINST HUMANITY game which has been available in Australia since 2010. The Applicant is also the owner of Trade Mark No. 1626354 for CARDS AGAINST HUMANITY registered from 3 June 2014 for various goods in class 28 including card games. The EIA gives extensive evidence of the Applicant's promotion of and reputation in the CARDS AGAINST HUMANITY mark that is not necessary to summarise in any great detail here. The EIA then gives evidence that the Trade Mark is used for a set of game cards and based on the similarity between the Trade Mark and the CARDS AGAINST HUMANITY mark, as well as the manner of use, submits that the Trade Mark was created by reference to the CARDS AGAINST HUMANITY mark and the intention of the Opponent was always to use the Trade Mark for a card game.
4. I am satisfied that the Opponent's evidence, which includes a clear sworn statement of an intention to use the Trade Mark at the relevant date as well as evidence of actual products, which I consider to be printed material for educational purposes, bearing the Trade Mark, is sufficient to shift the onus in this case to the Applicant. The EIR also provides third party evidence of use of the Trade Mark by the Opponent (or an authorised user) on printed material for educational purposes by attendees at the Pitch Camp workshops.
5. The Applicant's evidence does not satisfy its onus to demonstrate that the Opponent lacked an intention to use the Trade Mark at the time of registration. Taken at its highest the Applicant merely suggests that the Opponent actually intended to use the Trade Mark for a card game, when the EIR clearly demonstrates actual use of the Opponent's cards as training materials.
6. The crux of the Applicant's evidence goes towards the question of whether the Opponent sought to register the Trade Mark in awareness of or take advantage of the reputation of the Applicant in its CARDS AGAINST HUMANITY mark. For the reasons set out in paragraphs 16 and 17 above, this is not a factor I need to determine in the present proceeding. My task as delegate is to determine a genuine intent to use the mark for commercial purposes. The Applicant's concerns are properly determined through an application for cancellation under s 88 of the Act potentially raising grounds of ss 60 or 62A under the Act.
7. I am satisfied that at the relevant date the Opponent intended to use the Trade Mark for the Registered Goods. The Opponent has established its opposition in relation to s 92(4)(a).

1. I decide that the Opponent has established its opposition to removal in respect of the Registered Goods and I decline to remove the Trade Mark from the Register.

[1] [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

[2] Pfizer Products Inc. v Karam [2006] FCA 1663, [26] (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

[3] [1998] FCA 440 (citation omitted).

[4] [1960] HCA 47, [21].

[5] [2000] ATMO 31.

[6] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

[7] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

[8] [2008] FCA 970, [8].

[9] [2008] FCA 970, [8].