Hey hey it's staying: Celebrity Head survives non-use game

3 minute read 22.05.2025 John Fairbairn, Jessika Chan

The Federal Court of Australia recently overturned a Trade Marks Office decision on a non-use application, allowing the CELEBRITY HEAD mark to remain registered for a narrower range of goods.

Key takeouts

Trade mark owners do not need to actually sell goods or services to establish trade mark use in Australia. Limited online use in Australia may be sufficient in cases where there is a residual reputation.

Trade mark owners should be vigilant in maintaining control over the use of their registered trade marks by their licensees. To prevent a takeover, any trade mark use should be authorised and properly documented.

Trade mark owners should review their trade mark rights every three years. This helps assess whether their registered trade marks are actively used and reduces the risk of a removal action for non-use.

Overview of the Celebrity Head saga

Basefun Pty Ltd (Basefun) brought a removal action against its former licensor's, Somers Enterprises Australia Pty Ltd (Somers), mark CELEBRITY HEAD under section 92(4)(b) of the Trade Marks Act 1995 (Cth). That section permits a party to seek the removal of a registered trade mark if it has not been used for a three year period prior to the filing of the removal action. The key issue in this case was whether Somers' online use and promotional activities, combined with its genuine intention to re-launch the 'Celebrity Head' board game was sufficient to defend against the non-use action. Basefun was initially successful before the Trade Marks Office but, on appeal, the Court overturned the Delegate's decision.

Background to the dispute

Somers is a company linked to the host of Hey Hey It's Saturday, Daryl Somers, and the company is the registered proprietor for the mark CELEBRITY HEAD (Word Mark), covering board games and other game related goods, with a priority date of 5 August 1992. The Word Mark was coined by Daryl Somers in about 1991, and was first used in a game segment on the iconic Australian television show Hey Hey It’s Saturday. The game grew in popularity and was subsequently adapted into a board game, which Somers promoted on the show.

In 1992, Somers granted a licence to Basefun to use the Word Mark on a board game. Basefun manufactured and distributed the board game under that licence for many years, ceasing commercialisation around 2002. In 2017 and again in 2020, Basefun approached Somers to discuss relaunching the 'Celebrity Head' board game. However, the re-launch did not materialise and the relationship between the parties subsequently deteriorated. In 2021, Basefun initiated a removal action against the Word Mark and filed a trade mark application for the same mark, covering board games and other game goods.

Delegate's decision

Somers argued that it had used the Word Mark in the non-use period through:

video clips on its website featuring the Celebrity Head game segment and the board game;
meetings and correspondence regarding the licence and manufacture of the board game; and
its relationship with Basefun, which was an authorised user that promoted the board game under the control of Somers.

Even if such use was insufficient, Somers argued that the discretion under section 101(3) of the Trade Marks Act 1995 (Cth) should be exercised not to remove the registration.

The Delegate disagreed with Somers and ordered the removal of the Word Mark because they considered that the use relied upon, taken at its highest, merely amounted to preliminary discussions rather than trade mark use. Neither Somers nor Basefun had gone beyond investigating and planning to use the Word Mark on the board game. The Delegate also did not exercise its discretion to allow the Word Mark to remain on the Register because, amongst other reasons, they were not satisfied that:

Somers had a residual reputation in the Word Mark for board games, despite having a residual reputation in the Word Mark for the show and game segment;
Somers' entertainment services being, providing access to and streaming videos of the game segment, are closely related to board games and game goods; and
the removal of the Word Mark would result in consumer confusion.

Somers appealed the Delegate's decision to the Federal Court. Such proceedings involve a hearing de novo, which allows the Court to make its own findings independently of the Delegate's earlier decision.

The Court's findings

Justice Bennett heard the appeal and her Honour held that the combined effect of the parties' use was sufficient to constitute use of the Word Mark in the non-use period. This is despite the non-use period being at a time when there were no new episodes of the show, and there was no sales of the board game.

However, when considered together, various factors suggested that the Trade Mark had been used in the non-use period. In particular:

Somers' video clips featuring the game segment and board game, showed use of the Word Mark aurally and visually. These clips were an active promotion of the board game. They were accessed and viewed by residents in Australia, and not merely archived;
Somers' Facebook page, which published posts including one in the non-use period encouraging people to play the Celebrity Head game, was engaged by residents in Australia;
Basefun's discussions at the 2020 Toy Fair were advanced and not merely preliminary. This signalled a clear intention to use the Word Mark by bringing the board game to the market within a short timeframe; and
Somers authorised Basefun's use and exercised (quality) control as a matter of substance, such that any use by Basefun can be taken as use by Somers.

Although it was not necessary to determine the outcome in this case, her Honour would have exercised her discretion to allow the Word Mark to remain on the Register. The key factors relevant to that finding are summarised below:

There remains a substantial recognition of both the Hey Hey It’s Saturday show and the Word Mark in the marketplace, as well as a strong connection between the show and board game. As a result, there is a risk of confusion if the Word Mark were applied to a product that was not affiliated with Somers;
Somers has not abandoned the Word Mark, and is using the Word Mark on Facebook and its website; and
The Word Mark was a coined trade mark, which had developed a prominent reputation in Australia. Somers had considerable interests in the Word Mark, including that it was registered under the now-repealed Trade Marks Act 1955 (Cth), which grants it certain limited immunity from revocation actions. If the trade mark was removed, that immunity would be lost as it would not apply to any new registration for the same mark.

Somers was also granted a certificate under section 105 of the Trade Marks Act 1995 (Cth) to confirm that the Word Mark was used in good faith during the non-use period. Such certificates can be valuable in defending against removal actions – particularly in cases where the evidence of use may be open to interpretation or subject to dispute.

This case highlights that trade mark owners do not need to actually sell goods or services to establish trade mark use in Australia. Even limited online use, where the trade mark owner is actively promoting the registered trade mark, coupled with a genuine intention to use the mark, may be sufficient to defend against a removal action – particularly if the registered trade mark had or has recognition in the marketplace.

To protect your trade marks:

Trade mark owners should be vigilant in maintaining control over any third party use of their registered trade marks. They should ensure that any use of their registered trade marks is authorised and that their involvement in such use is properly documented. This includes maintaining records of approval, correspondence and any evidence of oversight or collaboration.
Trade mark owners should review their trade mark rights every three years to assess whether their registered trade marks are being actively used. Doing so will reduce the risk of a removal action and identify any gaps in protection. If you are uncertain or have concerns, our trade marks team can conduct a thorough review of your trade mark portfolio.

Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd [2025] FCA 218

Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd (No 2) [2025] FCA 418