King Par, LLC v Brosnan Golf Pty Ltd  FCA 795 (30 July 2014)
Unsuccessful interlocutory application by King Par under s31A of the Federal Court of Australia Act 1976 for a judgment against Brosnan Golf on the basis that it is not the owner of the ORLIMAR trade mark and its trade mark registration should be cancelled. However, this case raises the issue of abandonment and it will be interesting to see how this unfolds at the full trial.
By way of background, Orlimar Golf Equipment Company had two trade mark registrations for ORLIMAR and ORLIMAR TRIMETAL dating from 1998 covering golf equipment in class 28. These registrations were not renewed in 2008 and were subsequently removed from the Register.
Brosnan Golf applied to register the ORLIMAR trade mark on 24 December 2010 and obtained registration (without any opposition) in classes 25 and 28.
Many golfers will readily recall the ORLIMAR TRIMETAL fairway wood which was quite popular from the late 1990s. The Orlimar company suffered financial difficulty and, in 2003, its assets including the trade marks and associated goodwill were sold to King Par.
Unfortunately King Par did not record the transfer of the two Australian trade mark registrations and it appears the renewal notices were not made known to King Par.
Quite clearly, the Orlimar company had used the ORLIMAR trade mark well before Brosnan Golf filed its trade mark application and had a superior claim to ownership in Australia. However, Brosnan Golf is contending that the Orlimar company and King Par abandoned the ORLIMAR trade mark in Australia.
King Par filed evidence as to the historical use of the ORLIMAR trade mark prior to 2003 as well as website archive and other material pointing to ongoing Australian use, but there was an absence of any documents showing transactions between 2008 and June 2012.
Under Australian law, abandonment requires more than mere non use of a trade mark. Rather, it is necessary to show an actual intention to abandon, which is a question of fact. Accordingly, the judge, Greenwood J ( who did previously practice in the field of intellectual property) considered that Brosnan Golf ought not be denied a forensic opportunity to test the character of King Par’s engagement between 2008 and 2012. As a result, his Honour was not satisfied, under s 31A, that Brosnan Golf has no reasonable prospect of successfully defending the proceeding. He considered the proper course to resolve the issues in dispute was to set the proceeding down for trial in an expedited manner.
Incidentally, King Par has obtained acceptance of its own trade mark application for ORLIMAR filed on 6 August 2012 under the ‘prior continuous use’ provision, so at least IP Australia was satisfied as to ongoing use of this mark by King Par. Not surprisingly, Brosnan Golf has opposed registration of this application and this opposition is in a cooling off period.