Love him or loathe him, tennis star and former world number 1, Lleyton Hewitt, has chalked up an impressive number of wins in his career.
He’s beaten the likes of Agassi, Sampras, even Federer (2003 Davis Cup match).
But when he came up again John Shiels in a recent encounter, it was game set and match to Shiels. Never heard of Shiels? Read on -
Shiels is the owner of trade mark registration 986440 (see pic below).
In January 2004, Shiels registered the COME-ON trade mark in relation to tennis shirts, sportswear, tennis rackets and sporting equipment.
Even if you’re not a tennis fan, you’ve probably seen and heard Lleyton Hewitt’s trade mark ‘Come On!’ cry and accompanying fingers-to-eyes hand gesture. It’s mimicked and parodied by wannabe sports stars across the country.
Now check out the shape of the device that forms the letter ‘C’ in the COME-ON mark. It’s not a long stretch to say that the device looks a lot like Hewitt’s famous ‘Come On!’ open hand gesture. Shiels himself admits that the form of the ‘C’ represents an arm – although he says it’s in a fist pumping gesture.
In 2007, Hewitt (through his marketing company) started registering trade marks to protect his brand. These included the following marks:
Shiels threatened to oppose registration of Hewitt’s marks on the basis that they were similar to his earlier-registered COME-ON trade mark. While Shiels never followed through on the threat, Hewitt’s response was to apply to have Shiels’ COME-ON mark removed from the trade marks register for non-use.
Applications to remove trade marks for non-use are based on what I call the ‘use or lose it‘ provisions of the Trade Marks Act. Under the Act, a registered mark can be struck off the register on two non-use grounds:
- if its owner never intended to use the mark and, in fact, never did, or
- if it isn’t used for a continuous period of 3 years.
Hewitt attacked the COME-ON mark on the first ground.
Shiels gave evidence that he sold about 10 shirts carrying the COME-ON mark at a market stall in 2005 and gave away more free of charge. Hewitt responded by saying that selling 10 shirts over 6 years is such a tiny number that it shouldn’t be taken into account.
Unfortunately for Hewitt, it wouldn’t have made a difference if Shiels had sold one shirt or 1 million shirts carrying the COME-ON mark. The law says that one is enough.
A single bona fide use of the mark in the relevant period is sufficient
Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149
Game, set and match, Mr Shiels.
Tags: non-use application, trade mark use
