Mr Watson operated a retail clothing business through a range of companies of which Mr Watson was the sole shareholder and director, that were later consolidated into a single company, HD Brands Pty Ltd. Mr Watson owned the LUSH trade mark which was registered in class 25 in respect of “clothing, footwear and headgear”.
Section 100(1)(c) of the Trade Marks Act requires that it is for the owner of a trade mark to rebut any allegation made against them under section 92(4)(b) that their registered trade mark has not been used at any time during the period of 3 years ending one month before the day on which the application was filed. Cosmetic Warriors Ltd applied to remove the LUSH trade mark on the basis of non-use over the relevant preceding 3 year period, and were successful before the Trade Marks Office on the basis that HS Brands Pty Ltd (and Mr Watson’s other companies) had used the trade mark but not Mr Watson personally.
It was well established that use of a trade mark by another party under the physical control of the owner will satisfy the use requirements4, and that where a holding company or the like utilises a trade mark that is also utilised by other companies in the same corporate group, those companies operate with a unity of purpose’.5 However, what remained unclear was whether similar principles applied in circumstances where the trade mark was owned by an individual director or shareholder of companies that physically conducted business under the trade mark.
On appeal before the Federal Court, Justice Greenwood accepted that Mr Watson was a ‘one-man band’ who had personally attended to all operational matters of the business.6 On that basis, the Federal Court was satisfied that Mr Watson’s use of the LUSH Trade Mark during the relevant 3 year non-use period was legitimate use under section 100(1)(c) of the Trade Marks Act, hence Mr Watson’s registration was upheld.
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1 Watson as Trustee for the Watson Family Trust v Cosmetic Warriors Ltd [2022] FCA 700 (‘Watson’).
2 Trade Marks Act 1995 (Cth) s 100(1)(c) (‘Trade Marks Act’).
3 Ibid s 92(4)(b).
4 Trade Marks Act (n 1) s 26.
5 Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 46.
6 Watson (n 3) 71 & 28.
