Re: Opposition by Wheel Pros, LLC to application under regulation 17A.48C of the Trade Marks Regulations 1995 by Mark Boxer the Trustee for the Hoon Media Trust for cessation of protection of Protected International Trade Mark number 1366826 (International Registration number 1039510 (classes 9, 18, 25, 41) - HOONIGAN - in the name of Wheel Pros, LLC

Opponent: Tim Burn-Francis of Counsel, instructed by Allens Patent and Trade Mark Attorneys

2025 ATMO 262

Trade Marks Regulations 1995 (Cth) - application under regulation 17A.48C - use demonstrated in the relevant period for some goods - no obstacles to use of the trade mark - registrar's discretion not exercised - trade mark partially removed.

1. This decision concerns an application made on 17 January 2024 under reg 17A.48C of the Trade Mark Regulations 1995 (Cth)[1] ('Removal Application') by Mark Boxer the Trustee for the Hoon Media Trust ('Removal Applicant') for the cessation of protection for non-use of protected international trade mark number 1366826 held in the name of Wheel Pros, LLC ('Removal Opponent'). The details of the trade mark are outlined below:

Class 9: Video game discs and software; computer game discs and software; accessories specially adapted for use with mobile phones, smartphones, and personal digital assistants (PDAs), namely, holsters, and carrying cases

Class 18: Bags, namely, all-purpose carrying bags; sports bags; backpacks; book bags; carry-on bags; tote bags; gym bags

Class 25: Clothing, namely, tops, t-shirts, shirts, sweaters, sweatshirts, jackets; headwear, caps, beanies, hats

Class 41: Entertainment services, namely, providing a web site featuring videos in the field of motorsports, action sports and sporting events; on-line journals, namely, blogs featuring information on motorsports, action sports and sporting events; providing a web site featuring entertainment information, videos, photographs, and other multimedia materials concerning motorsports, action sports and sporting events all for entertainment purposes

1. The Removal Application is made in relation to all of the Registered Goods and Services.
2. On 18 March 2024, the Removal Opponent filed a Notice of Intention to Oppose the Removal Application, followed by a Statement of Grounds and Particulars on 18 April 2024. The Removal Applicant filed a Notice of Intention to Defend on 17 May 2024.
3. On 21 August 2024, the Removal Opponent filed Evidence in Support. The Removal Applicant filed Evidence in Answer on 28 November 2024. On 10 February 2025, the Removal Opponent filed Evidence in Reply.
4. Following the end of the period for filing evidence, both parties requested to be heard. On 16 September 2025, the matter was heard before me, a delegate of the Registrar of Trade Marks ('Registrar'). The Removal Opponent was represented by Tim Burn-Francis of Counsel with instruction from Allens Patent and Trade Mark Attorneys. The Removal Applicant relies on written submissions prepared by Mark Boxer of the Removal Applicant.

1. Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks and that all references to the removal of a trade mark are to be taken as a reference to the cessation of protection of international trade marks.
2. Section 92(4)(b) 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:

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for registration of the Trade Mark,[2] and I note that five years since filing the application for registration of the Trade Mark had passed at the time of the Removal Application.
   1. The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time within the three-year period ending on 17 December 2023 ('Relevant Period').
   2. The Removal Opponent bears the onus of rebutting the allegation made under section 92(4)(b) of the Act.[3] The standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The Removal Opponent may rebut the allegation by establishing that:
      • The Trade Mark was used in good faith by the Removal Opponent in relation to the Registered Goods and Services during the Relevant Period;[5] or
      • The Trade Mark was not used because of circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.[6]

Lisa Reichenthal, Associate General Counsel for the Removal Opponent ('Reichenthal')

Mark Boxer, trustee of the Hoon Media Trust ('Boxer')

1. On 19 September 2024 the Removal Opponent requested that the declaration of Lisa Reichenthal dated 17 September 2024 with Exhibit LR-22 be considered under reg 21.19. However, it is not necessary to consider this request any further as the contents of this declaration and its exhibits are substantially reproduced in the Removal Opponent's evidence in reply.

1. Reichenthal provides a history of the Removal Opponent, a company founded in 1995 as a retailer of aftermarket branded vehicle wheels, performance tyres and related accessories. The Trade Mark was initially filed by Ken Block, a professional rally driver, as an international registration designating Australia. In 2010, Ken Block co-founded Hoonigan Industries, LLC ('Hoonigan Industries'), a company which sold motorsport related apparel and accessories. In 2021, the Removal Opponent approached Mr Block about acquiring 'all rights, title and interests in the intellectual property associated with the Hoonigan brand', including the Trade Mark. The Trade Mark was subsequently assigned to the company Hoonigan, LLC. Hoonigan Industries subsequently merged with the Removal Opponent and Hoonigan, LLC in September 2021. An article published on 2 September 2021 summarising the merger is included in Reichenthal.
2. Reichenthal claims that the Trade Mark has been continuously used in relation to the Registered Goods and Services by either the Removal Opponent, Hoonigan Industries or Hoonigan, LLC. In support, Reichenthal exhibits:
   • screenshots showing the Trade Mark on packaging for the video game, Dirt Showdown made available for purchase via the Microsoft Xbox online store, Amazon, and video game retailers;[7]
   • screenshots showing the Trade Mark on various items of clothing sold on Amazon, and the websites www.mororhound.com.au and www.shop.hoonigan.com;[\[8\]](#fn8) and
   • screenshots showing the Trade Mark in videos published on YouTube.[9]
3. In connection with the goods in Class 9, Reichenthal explains that the Removal Opponent authorised the use of the Trade Mark in relation to various computer and video games, including the Forza Horizon and The Crew series of games_._ Specifically, in relation to the video game Forza Horizon 5, vehicles featuring the Trade Mark could be unlocked and utilised in the video game by users. A screenshot demonstrating use of the Trade Mark in this context, published in a video on YouTube, is reproduced below:

1. The Crew Motorfest, a video game released on 14 September 2023, also featured motor vehicles bearing the trade mark . Screenshots of YouTube video displaying these motor vehicles are included in Reichenthal.[10]
2. Third party media articles discussing the use of the Trade Mark in the games Forza Horizon 5 and The Crew Motorfest are included in Reichenthal.[11] By way of example, Reichenthal exhibits an article entitled 'Forza Horizon 5 players pay tribute to Ken Block with Hoonigan Cars' published on the website www.nme.com on 4 January 2023.
3. Reichenthal declares that bags, clothes and headwear featuring the Trade Mark were sold via the online shops www.shop.hoonigan.com ('Hoonigan Online Shop'), www.motorhound.com.au and www.hatstoreaustralia.com. Screenshots of the Hoonigan Online Shop sourced from Wayback Machine dated 9 November 2023, 28 November 2023, 2 December 2023, and 8 December 2023 are exhibited to Reichenthal.[12] Reichenthal attests that this website offers worldwide shipping, including to Australia. Exhibits LR-14 and LR-15 include dated screenshots of the websites www.motorhound.com.au and www.hatstoreaustralia.com.
4. Instagram posts from an account named 'the hoonigans' promoting bags featuring the trade mark are also exhibited to Reichenthal.[13]
5. The Removal Opponent is the owner of a YouTube account/channel called 'The Hoonigans'. The channel was created on 13 October 2010 and features a variety of entertainment videos in the fields of automotive racing and sporting events. Screenshots and examples of the videos are exhibited to Reichenthal.[14] Similar content is hosted on the website www.hooniganracing.com, with a greater focus on Mr Block and his rally career. Exhibit LR-18 includes screenshots from this website.
6. Reichenthal 2 includes a spreadsheet of orders said to be made via the Hoonigan Online Shop. The spreadsheet is complimented by illustrative examples.

1. Mr Boxer declares that the brand name 'Hoon' was created in 2010 and asserts that it has since developed a significant reputation in the Australian motorsports media industry. In support of this contention, Boxer includes a list of videos from YouTube. Hyperlinks to these videos are provided, but the videos are otherwise not included in the declaration. Hyperlinks may change, direct to different content or cease to function and I have not had regard to any of the hyperlinks included in either of the parties' evidence unless the results of those hyperlinks were exhibited to the relevant declaration.
2. I acknowledge that HoonTV is a YouTube channel with over 65.8 thousand subscribers and Mr Boxer's statements that a HoonTV video published on YouTube accrued over 500,000 views.
3. The Removal Applicant is the owner of the following trade marks:

1. The remainder of Boxer includes submissions regarding the Removal Opponent's alleged use of the Trade Mark. These submissions are substantially repeated in the Removal Applicant's written submissions, and will be addressed as necessary below.

1. The first issue to be determined is whether there has been use of the Trade Mark by the registered owner, or an authorised user, in good faith in relation to the Registered Goods and Services during the Relevant Period.
2. The use required is 'use as a trade mark'. This is use of the sign as a 'badge of origin' in the sense that it indicates a connection in the course of trade between the goods and/or services and the person who applies the trade mark to the goods and/or services.[15] This may include an offer or advertisement to supply the relevant goods or services by reference to the trade mark,[16] a commercial dealing in relation to the goods or services by reference to the trade mark, or preparatory steps combined with an existing offer to supply goods or services.[17]
3. The fewer acts of use relied on, the more convincingly they need to be established.[18] Where the removal opponent relies on one, or only a few, instances of alleged use, those instances should be established by 'if not conclusive proof, then overwhelmingly convincing proof'.[19]
4. It is convenient to begin with a discussion of the various versions of 'HOONIGAN' included in the Removal Opponent's evidence. Whilst Reichenthal does demonstrate use of 'HOONIGAN' in plain text, it also includes various other trade marks that incorporate the word 'Hoonigan', most notably the following logo:

If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark'.

1. Whether a trade mark has been used with additions or alterations that substantially affect the identity of the trade mark has been interpreted to equate to an assessment of whether the alleged use of the trade mark is substantially identical to the registered trade mark.[20] The test for assessing substantial identity involves a side by side comparison between the trade marks, and a determination of whether, having regard to their similarities and differences, a total impression of similarity emerges.[21]
2. In this instance, the Logo Mark includes the word HOONIGAN between a pair of square brackets rendered in a stylised font. While the brackets and font are clearly discernible features, I consider the essential and primary identifying feature of the Logo Mark to be the word HOONIGAN. As this word is also the sole element of the Trade Mark, I am satisfied on a side by side comparison, that there is a total impression of similarity between the trade marks. I will now turn to the question of whether the Trade Mark has been used in relation to the Registered Goods and Services.

Class 9 goods - game discs, game software, holsters and carrying cases

1. Reichenthal declares that during the Relevant Period the Removal Opponent authorised use of the Trade Mark in relation to various video and computer games.[22] Three video games were identified by the Removal Opponent: Dirt Showdown, Forza Horizon 5 and The Crew Motorfest, published by Codemaster, Microsoft and Ubisoft, respectively. A screenshot from the Australian Xbox online store, dated 23 July 2024, shows the following use of the Trade Mark:

1. According to the description of the product on the Xbox online store, Dirt Showdown was a video game released on 22 May 2012, which appears to be, as of 2024, offered for download in Australia. A screenshot from the Australian online retail store, The Gamesmen, at www.gamesmen.com.au, also shows the DIRT Showdown Hoonigan Edition available for purchase as of 23 July 2024. The use of the Trade Mark in relation to Forza Horizon 5 and The Crew Motorfest, is demonstrated via the third-party media articles included in Reichenthal and screenshots from YouTube.[23]
2. The Removal Opponent concedes that this evidence does not establish use of the Trade Mark in respect of its goods in Class 9, but emphasised that for the purposes of discretion, the evidence did demonstrate use of the Trade Mark in relation to similar goods, namely virtual goods and downloadable goods for use in software games. This point will be discussed in more detail later in this decision. For the present purposes, I agree with the parties' position, noting, firstly, that whilst of use of the Trade Mark was said to be authorised in relation to various video and computer games, there is only limited evidence that goes to the question of whether the Removal Opponent has any control over the use of the Trade Mark in relation to Codemaster's, Microsoft's and Ubisoft's use of the Trade Mark.
3. Authorised use of a trade mark is taken to be use of the trade mark by the registered owner.[24] A person is an authorised user if the use of the trade mark in relation to the relevant goods or services is under the control of the registered owner.[25] Sections 8(3) and 8(4) provide for two types of control: financial and quality control. It is apparent from s 8(5) that the types of control are not limited to these two scenarios. In Lodestar Anstalt v Campari America LLC ('Lodestar'),[26] Besanko J observed:

Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8.[27]

1. Apart from the statements in Reichenthal that the Removal Opponent authorised use of the Trade Mark in the video games, the Removal Opponent's evidence, as far as the question of authorised use is concerned, is limited to third party media articles referencing the collaboration between the Removal Opponent and these parties. For example, an article published on 24 January 2023 by Windows Control entitled 'Forza Horizon 5 to honor Ken Block with Series 18 dedication and player gifts', discusses the passing of Ken Block, 'founder of the Hoonigan racing team' and the inclusion of exclusive 'in-game content' in the form of a 1965 Hoonigan Ford Mustang. Similarly, an article for online publication WHICHCARE? includes a list of vehicles available for use in Forza Horizon 5, which includes a '1955 Hoonigan Chevrolet Bel Air'.[28] The terms or period of any license agreements or arrangements with the publishers of the video games are not included in the Removal Opponent's evidence. Whilst these articles make it apparent that the Trade Mark has been licensed for use in several video games, it is insufficient to establish a sufficient connection between the Removal Opponent and the use of the Trade Mark of the sort required by s 8(1).
2. Secondly, the use demonstrated in Reichenthal in relation to Class 9 goods concerns use of the Trade Mark in the form of digital assets in video games. As stated earlier, the Removal Opponent concedes that this is not use in relation to software in and of itself. In my view, the distinction is fine, but I acknowledge the difference between a video game, and the licensed digital assets that appear or are promoted in a video game.
3. Lastly, there is no evidence of any use of the Trade Mark in relation to the accessories specified in Class 9, being holsters and carrying cases for smartphones, mobile phones and PDAs.

1. The Removal Opponent relies on dated screenshots from the Hoonigan Online Shop, which feature use of the Trade Mark in relation to various items of clothing. The following screenshot, for example, dated 28 November 2023, shows use of the Trade Mark in relation to hoodies:
2. 
3. This use is supplemented by a spreadsheet detailing sale of products from the Hoonigan Online Shop to consumers in Australia.[29] These products include items of clothing and headwear. The Removal Opponent also provides the following screenshots from the web pages of www.motorhound.com.au, which are dated 22 February 2023 and 19 November 2023, respectively:

1. The Removal Opponent also relies on the following screenshot from a web page at www.hatstoreaustralia.com, dated 5 December 2023:

1. These websites are third-party online retail stores with Australian domain names, and the examples are all from within the Relevant Period. The items of clothing offered for sale on the websites are branded with an array of different trade marks, including the Trade Mark and the Logo Mark. Notably, the goods are clearly identified with reference to 'HOONIGAN', which is positioned in plain text directly below each of the items of clothing offered for sale and in the banner above the listed goods. In my view, consumers in this context are likely to perceive the products as being branded under the Trade Mark. Accordingly, I am satisfied that this constitutes use of the Trade Mark in Australia within the Relevant Period for the Registered Goods in Class 25.

1. Exhibit LR-17 of Reichenthal includes screenshots from an Instagram account named 'thehoonigans'. The following screenshots are taken from posts dated 12 February 2021 and 2 June 2021:

1. It is not evident from the Instagram screenshots whether there has been any direct marketing to Australian consumers. However, Reichenthal 2 includes the following example of a pencil bag sold with reference to the Trade Mark via the Hoonigan Online Shop:

1. Whilst the above screenshot is not dated, Exhibit LR-23 of Reichenthal 2 includes a spreadsheet detailing sales of grab bags, tote bags, pencil bags and toiletry bags with reference to the Trade Mark to Australian consumers via the Hoonigan Online Shop. The pencil bag, for example, was said to be sold on 14 October 2022 to a customer in New South Wales. I am satisfied that this constitutes use of the Trade Mark in relation to the Registered Goods in Class 18 by the Removal Opponent in Australia.

1. In relation to entertainment services in Class 41, the Removal Opponent relies on alleged use of the Trade Mark in videos hosted on the Removal Opponent's YouTube channel and the website www.hooninganracing.com. The YouTube channel bears the name 'Hoonigan', has 5.72 million subscribers and features use of the following trade marks:

[HOONIGAN]

1. I am satisfied, noting the published name of the YouTube channel and the use of the Trade Mark in the title of various videos published on the YouTube channel, that the videos demonstrate use of the Trade Mark in relation to online videos. The videos are also published during various dates within the Relevant Period. The more complex issue to be determined is whether this use constitutes use of the Trade Mark in Australia.
2. The Removal Opponent submits that because various videos were filmed in Australia it can be inferred that at least some of the millions of viewers were located in Australia. Conversely, the Removal Applicant submits that filming in Australia is insufficient to constitute use of a Trade Mark on entertainment services in Australia. The Removal Applicant's written submissions emphasise that YouTube is a global platform and that there has been no evidence of any direct engagement with the Australia market.
3. In Ward Group Pty Ltd v Brodie & Stone plc,[30] a decision which concerned infringement of a trade mark, Merkel J stated:

the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.[31]

1. The decision of Energy Beverages LLC v Cantarella Bros Pty Ltd[32] involved a question of whether use of a trade mark in advertisements on Facebook and YouTube amounted to use of a trade mark in Australia. The Full Court concluded that mere use of, in this case, an emoji and a posted comment, did not constitute use of the trade mark in Australia. The Full Court reiterated the proposition that 'mere uploading of trade mark content on a website outside Australia is not sufficient to constitute use of the trade mark in Australia'[33].
2. This issue is especially challenging when involving large content platforms, such as YouTube, which host content directed, generally, towards the world at large. The Removal Opponent's evidence does not demonstrate that any Australian residents have engaged with the Removal Opponent's video content, nor is there an indication how many, if any, of the content's viewers were from Australia. This leads me to the conclusion that the Removal Opponent's estimation that its subscribers or viewers would include Australians, whilst not unreasonable, is speculative. The Removal Opponent's videos include references to Australia with video titles, such as 'Drag racing, Aussie Style!' and 'Aussie Burnout Cars Drag Race', as well as playlists, such as 'THIS vs THAT:: Down Under'.[34] However, I do not consider this to be evidence of anything further than the fact that these videos were filmed in Australia or involve Australian vehicles. In lieu of any evidence that might provide a more empirical basis for concluding that these videos were targeted towards Australian consumers, such as analytics from the YouTube Account, I am not satisfied that the use of the Trade Mark on the Removal Opponent's YouTube Channel constitutes use of the Trade Mark in Australia.
3. The same can be said for the use of the Trade Mark at www.hooniganracing.com. This website features of the Trade Mark and hosts a variety of videos and vlogs about Ken Block, racing and motor vehicles. However, there is no content on the website that indicates any intention to direct this content towards Australian consumers. For these reasons I am not satisfied that there has been use of the Trade Mark in Australia in regard to any of the Registered Services in Class 41.
4. Having regard to the reasoning above, I am satisfied that the evidence demonstrates use of the Trade Mark in relation to all of the Registered Goods in Class 18 and Class 25. However, I am not satisfied that the Removal Opponent has used the Trade Mark in relation to the Registered Goods and Services in Class 9 and Class 41 ('Remaining Goods and Services').
5. No submissions have been made by the Removal Opponent regarding any obstacles to use of the Trade Mark. Nor does any information before me suggest that any obstacles prevented use of the Trade Mark during the Relevant Period. Accordingly, as the Removal Opponent has not established use of the Trade Mark in relation to its goods in Class 9 and its services in Class 41, I will now consider whether it is appropriate to exercise discretion to allow the Trade Mark to remain registered for those goods and services.

(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

1. The Removal Opponent bears the onus of satisfying me that that the discretion under s 101(3) ought to be exercised.[35] In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[36] the Full Court summarised the considerations relevant to the exercise of the Registrar's discretion:
   • whether there has been abandonment of the trade mark;
   • whether the registered proprietor of the mark still has a residual reputation in the mark;
   • whether there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
   • whether the applicant for removal had entered the market in knowledge of the registered mark;
   • the registered proprietors were aware of the applicant's sales under the mark; and
   • whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[37]
2. The Removal Opponent's submissions that the discretion should be exercised in its favour can be summarised as follows:
   • The Removal Opponent has demonstrated extensive use and a reputation in connection with virtual goods both online and in relation to software, which are similar goods to the Remaining Goods in Class 9;
   • There would a real and tangible danger of confusion should a similar trade mark be used in relation to computer software given the nexus between software and virtual goods used in software;
   • The Removal Opponent intent to rebrand under the Trade Mark received significant media attention;
   • The Trade Mark has acquired a significant international reputation; and
   • There is no evidence that the Removal Opponent has abandoned its use of the Trade Mark in Australia.
3. The Removal Applicant's submissions emphasised that a global reputation, while relevant, is not a substitute for local use of the Trade Mark, particularly where there is no clear targeting of Australian consumers. The Removal Applicant also disputed the Removal Opponent's claims that the removal of the Trade Mark from the Registrar would result in consumer confusion.
4. In my view, a reputation in relation to the Trade Mark has not been established in respect of any of the Registered Goods and Services. No revenue or marketing expenditure has been provided by the Removal Opponent. Furthermore, the use of the Trade Mark that has been demonstrated, and other factors, namely the subscribers to the Removal Opponent's social media accounts and the references to the Trade Mark in the included third party media articles, do not convince me that the Trade Mark has acquired a reputation either in Australia or internationally.
5. In regard to the goods in Class 9, I will set aside cases and holsters, which I do not consider to be similar to software. There is merit to the Removal Opponent's concerns regarding the nexus between virtual goods and computer software. Earlier in this decision I acknowledged that there is a fine distinction between software and a digital asset utilised in a video game, particularly where the digital asset is made available for purchase in game or separately as downloadable content. The Removal Opponent's evidence also demonstrates that these virtual goods may be sold via the same trade channels as video games, and are used in conjunction with video games. For these reasons I accept that there would be a tangible risk of confusion if a third party were to register a similar enough trade mark in relation to software while the Trade Mark continued to be used in relation to virtual goods featured in video games.
6. As discussed earlier in this decision at [37], I am not satisfied that the Removal Opponent established authorised use of the Trade Mark in this context. However, the articles provided by the Removal Opponent, and the screenshots demonstrating use of the Trade Mark on digital assets in video games do indicate that the use of the Trade Mark in this context reflects the Removal Opponent's use of the Trade Mark in connection with vehicles and racing. In my view, this is sufficient to create an association in the mind of consumers between use of the Trade Mark in video games and the Removal Opponent, further contributing to the risk of confusion. This is a factor that weighs in favour of the exercise of the discretion.
7. Reichenthal includes several articles discussing the Removal Opponent's rebranding under the Trade Mark.[38] These articles, both from 2023, speak in general terms of the Removal Opponent's rebranding, but provide no indication of any future intent to use the Trade Mark in relation to the Remaining Goods and Services. Accordingly, I am not persuaded that they weigh in favour of the Removal Opponent in exercising the discretion in relation to the Remaining Goods and Services.
8. The Removal Applicant's interest in this matter is clear having applied to register a variety of trade marks incorporating the word 'Hoon'.[39] There is also a public interest in maintaining the Registrar, which necessitates the removal of unused trade marks.
9. In light of the above considerations, I am satisfied that it is appropriate to exercise the discretion in relation to video game discs and software; computer game discs and software in Class 9. However, I am not satisfied that it is reasonable to exercise the Registrar's discretion to allow the Trade Mark to remain registered for any of other Remaining Goods and Services.

If the Registrar dismisses the opposition under regulation 17A.48K, the Registrar must cease protection in respect of the goods, services, or both, specified in the application for cessation of protection.

1. The Removal Opponent has rebutted the allegation of non-use in respect of the goods in Classes 18 and 25. Whilst I am satisfied that it is reasonable to exercise the Registrar's discretion in relation to some of the goods in Class 9, I am not satisfied that it is reasonable to allow the Registered Goods and Services to remain unamended. Accordingly, I direct that, one month from the date of this decision, trade mark registration number 1366826 be amended as follows:

Class 9: Video game discs and software; computer game discs and software; accessories specially adapted for use with mobile phones, smartphones, and personal digital assistants (PDAs), namely, holsters, and carrying cases

Class 18: Bags, namely, all-purpose carrying bags; sports bags; backpacks; book bags; carry-on bags; tote bags; gym bags

Class 25: Clothing, namely, tops, t-shirts, shirts, sweaters, sweatshirts, jackets; headwear, caps, beanies, hats

Class 41: Entertainment services, namely, providing a web site featuring videos in the field of motorsports, action sports and sporting events; on-line journals, namely, blogs featuring information on motorsports, action sports and sporting events; providing a web site featuring entertainment information, videos, photographs, and other multimedia materials concerning motorsports, action sports and sporting events all for entertainment purposes

1. Should the Registrar be served with a notice of appeal before one from the date of this decision, I direct that the amendment not occur until the appeal has been decided or discontinued, and that any disposition of the removal application be in accordance with the Court's orders or direction.

1. Both parties sought an award of costs. As both parties have had a degree of success, I have made no orders for costs.

[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) ('Act') or Trade Marks Regulations 1995 (Cth) ('Regulations').

[2] Section 93(2) applies to trade marks filed from 24 February 2019 onwards. See: Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3.

[3] Trade Marks Act 1995 (Cth) section 100(1)(c).

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[5] Ibid s100(3)(a).

[6] Ibid s100(3)(c).

[15]Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ); Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

[16] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2) [1984] HCA 73, [23] (Gibbs CJ, Mason, Wilson, Deane and Dawson JJ).

[17] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).

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

[20] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [256] (Yates J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ).

[21] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

[23] Ibid Exhibits LR-7, LR-10 and LR-11.

[24] Section 7(3).

[25] Section 8(1).

[26] [2016] FCAFC 92 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ).

[29] Reichenthal 2 [9] and Exhibit LR-23.

[30] [2005] FCA 471.

[32] [2023] FCAFC 44 (Yates, Stewart and Rofe JJ).

[33] Ibid [76]; See also: Progressive Green Pty ltd v Flo Energy Pty Ltd [2025] FCA 1315, [239] (Bennett J).

[35] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

[36] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).