The Federal Court’s judgment in Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd [2025] FCA 218 is an important decision for owners of legacy brands, i.e. especially for those whose reputation sits partly in television or other media, rather than continuous retail sales. Bennett J allowed the appeal here, setting aside the Registrar’s delegate, and ordered that the “CELEBRITY HEAD” trade mark remain on the Register in respect of a narrowed specification. The reasons explain when online promotion and preparatory commercial steps can amount to “use” for the purposes of a non-use removal action.
Background of the case
“CELEBRITY HEAD” was started being used as a recurring game segment on “Hey Hey It’s Saturday” (first used 1991) and later became a home board game manufactured and distributed by Basefun under license. Basefun applied in 2021 to remove the mark for non-use. The Registrar’s delegate agreed; however, the Appellant (Somers Enterprises) appealed. The Court heard additional material (website views, Facebook posts, prototype images and contemporaneous correspondence about a planned relaunch and a 2020 Toy Fair) and held that, when taken together, there was sufficient use in Australia during the relevant three-year non-use period (and, alternatively, that retention under the court’s discretion was warranted). The appeal was allowed, and the mark was retained in amended form.
Bennett J worked through the usual statutory anatomy, i.e. a removal applicant under sec 92(4)(b) alleges continuous non-use; the onus to rebut sits with the registered owner under sec 100(1)(c); and sec 100(3) and sec 7/8 define authorized use and control. Use must be “in the course of trade” and be genuine and in good faith, but it need not be sales, i.e. advertising, merchandising and preparatory commercial steps can qualify. That said, the court may, alternatively, exercise the broad discretion in sec 101(3) to retain a mark where removal would be unreasonable, taking into account matters such as residual reputation, the owner’s interest, and the practical risk of consumer confusion.
A useful way to read the judgment is by contrast with the Energy Beverages decisions where archived TV commercials living on YouTube did not amount to use during the non-use period. Bennett J expressly considered that line of authority and explained why this matter was different. In Energy Beverages LLC v Cantarella Bros Pty Ltd , the online materials were essentially passive historical archives with no evidence of Australian engagement; although here, the evidence showed active online promotion (for example, a Boxing Day 2018 Facebook post actively encouraging families to play “Celebrity Head” at home) together with measurable views of clips on the Appellant’s streaming site. Equally important were the commercial, preparatory steps: prototype images, direct correspondence about relaunch terms, and a concrete participation by Basefun at the 2020 Toy Fair. Those elements together moved use from the realm of archival display into the realm of commercial, trade-related activity.
The Court’s practical approach to “use” and preparatory acts
Two points about “use” emerge from the reasoning that are especially practical for practitioners-
- Small, genuine acts can carry weight when anchored to a realistic commercial plan. The Court accepted that only modest numbers of views or a single promotional post may be enough where the mark has genuine commercial intent behind it and sits in the context of recognizable market channels. The “Celebrity Head” game carried significant residual market recognition from its TV history, so modest online engagement took on more significance than it might for an unknown brand.
- Preparatory commercial steps can be “use” where they go beyond mere investigation. The Court relied on prototype images, distributor interest reported after the Toy Fair, and evidence that Basefun represented it had rights to use the name. Those steps showed something more than exploratory conversations, i.e. they evidenced an intention objectively committed to bringing the product to market within a reasonable timeframe. That sits comfortably with authorities recognizing that steps immediately antecedent to sale can amount to use.
Authorized “use” and control
Bennett J accepted that Basefun’s activity at the Toy Fair, and the prototype it showed could be treated as use by the proprietor because the evidence showed the Appellant exercised substantive control over the use (authorization and quality control). That’s a reminder, i.e. where a third party uses a mark, document the authorization, the scope of the license, and any quality-control arrangements. Those records will support an argument that authorized third-party use counts as proprietor use under sec 7(3) and sec 8.
The court’s discretion under sec 101(3)
Even if the Court had concluded “use” was not established, Bennett J said he would nonetheless have exercised the discretion to keep the mark on the Register. His reasons highlight the factors that tip the scale in favor of retention, i.e. a clear and continuing residual reputation in Australia, the owner’s ingrained connection to the mark (it was coined by the owner and developed through long use), the lack of convincing counter-vailing public interest or prejudice, and the reality that removal could foster consumer confusion given the mark’s profile. But that discretion is not a license to do nothing as the owner still needs evidence of ongoing maintenance of goodwill and some demonstrable steps to use or revive the mark.
Practical takeaways for brand owners and litigators
The Somers decision gives several basic lessons while defending and enforcing the trade mark rights-
- Preserve documentary evidence of how the mark is used in media, promotional posts, view metrics, and any engagement that shows Australian audience access. Raw screenshots and analytics are valuable.
- Record authorizations and quality control. If a third party markets or prototypes under license, keep correspondence, prototype photos, distribution pitches, and quality assurance communications. These can establish authorized “use”.
- Don’t rely on “archival presence” alone. Old ads left on YouTube or archived web pages will often be insufficient unless there is evidence of active promotion or audience engagement in the non-use period.
- Act earlier rather than later when planning relaunches. Preparatory steps are recognized as “use” where they show an objective commitment to market the product. Evidence of real distributor interest, prototype development and a focused launch plan helps convert preliminary activity into a genuine use argument.
- When in doubt, quantify reach. Simple metrics (views, clicks, comments tied to Australian profiles) can transform what looks like passive content into evidence of trade “use”.
Final thoughts
Somers Enterprises v Basefun is a useful, balanced decision. It recognizes the commercial realities of modern brand management, i.e. important consumer recognition can survive periods without continuous retail sales and that digital promotion and concrete relaunch efforts can, when proven, meet the statutory test for “use”. At the same time, it doesn’t let proprietors off the hook, i.e. passive archival presence is not enough but, active promotion, objective steps toward commercialization, and clear authorizations are the signals tribunals want to see. For owners of legacy marks (particularly those born on screen), the ruling confirms a practical pathway to defend registrations, but only if the paper trail and promotional activity are kept in order.
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