Case Study: Come on Aussie!

The case of John Patrick Sheils v LLeyton Hewitt Marketing Pty Limited demonstrates how powerful a registered trade mark can be in protecting your brand.

In this case, Lleyton Hewitt Marketing (LHM) had made an application to register a trade mark in 2007 with the words “come on” and a logo featuring a man doing a fist pump. However, a somewhat similar trade mark had been registered by Mr Sheils in 2004. After Mr Sheils objected by way of a letter to LHM’s trade mark being registered, LHM bit back by seeking Mr Sheils’ trade mark be removed. LHM argued that not only was the fist pump a recognisable, proprietary gesture of Lleyton Hewitt, the professional tennis player, but that Mr Sheils had registered the trade mark in bad faith and had never used the trade mark in the course of trade within Australia. LHM pointed out that the trade mark had seen extremely limited use and what little use it experienced was not for commercial purposes.

Mr Sheils presented evidence that he had developed the trade mark in 2004 with the help of his daughters and that the fist pump was a gesture of success that other sportsmen from Australia used. Following the successful registration of his trade mark in 2004 he tried, without much success, to gain support for the use of his mark on various sporting goods and apparels. Some of the goods produced, such as shirts, were sold, however a majority of the goods that were marked were used as samples in his bid to popularise the mark. The last time the goods were used was in 2008.

The primary matter before the hearing officer was if Mr Sheils’ trade mark could be removed for non-use. The hearing officer concluded that, even if the use of the trade mark was localised and only a limited number of the goods were sold, nevertheless there was a geniune intention to use the trade mark for commercial use.

While it is true that a registered trade mark can be removed due to non-use, this case demonstrates that even limited use of a registered trade mark will continue to protect your interest in the registered trade mark. Mr Sheils took active steps to preserve evidence of his use of his registered trade mark and this ultimately was the reason of his success in this particular case.