Case Summary: Marshall B. Mathers III v Swim Shady Pty Ltd [2026] ATMO 119

Non-use removal proceedings under s 92(4)(b), Trade Marks Act 1995 (Cth) — SHADY (934421) and SHADY LIMITED (938898)

Overview

This decision of a Delegate of the Registrar (Benjamin Goldsworthy) is a useful case study for trade mark owners — particularly those who license, or informally permit, use of their marks through related entities, agents, or corporate structures — on what is actually required to rebut a non-use removal application. Despite extensive evidence of commercial activity referencing “Shady” and “Slim Shady,” the Opponent (Marshall Mathers III, professionally “Eminem”) failed to establish either use by himself as registered owner, or authorised use by a third party, and the Registrar’s residual discretion under s 101(3) was not exercised in his favour. The Trade Marks were partially removed for classes 18 and 25 goods (and unaffected in respect of the goods not challenged).

The decision turns on two related but distinct failures of proof: (1) an evidentiary failure to demonstrate qualifying trade mark use within the meaning of s 17, and (2) a failure to establish that any use shown was “authorised use” within the meaning of ss 7(3) and 8, because actual control by the registered owner over the user was not made out.

Background

The Opponent, Marshall B. Mathers III, performs professionally as “Eminem,” with the alter ego and secondary stage name “Slim Shady.” He is the registered owner of two marks: SHADY (934421), filed 15 November 2002, covering goods in classes 9, 18 and 25 (including electronic apparatus and media, leather goods and bags, and clothing/footwear/headgear); and SHADY LIMITED (938898), filed 31 December 2002, covering classes 3, 9, 18 and 25 (adding cosmetics, toiletries and personal care items in class 3). The Applicant, Swim Shady Pty Ltd, filed applications on 13 January 2025 under s 92(4)(b) seeking partial removal of both marks, targeting only the class 18 goods (leather goods, bags, luggage, umbrellas, walking sticks, saddlery and the like) and the class 25 goods (clothing, footwear, headgear) — the class 3 and class 9 goods were not challenged.

The substance of the Opponent’s evidence (through Mr Bartlett) was that the Opponent has used “Shady” in connection with music and merchandise since at least 1999, and that in 2003 he launched a streetwear label called “Shady Limited,” later folded into a broader “SHADY” merchandise brand. The exhibits showed merchandise sold through two websites (www.eminem.com and www.shadyrecords.com, said to be “controlled” by the Opponent, with the eminem.com domain registered to, and held by, Interscope Records — his record label — on his behalf), extensive social media activity across Facebook, Instagram and X, a co-branded “Air Shady” sneaker collaboration with Nike, and media coverage of the Opponent’s Australian tour and merchandise. Confidential exhibits purported to show Australian merchandise revenue and website visitor numbers for 2024, and a small sample of consumer invoices for three specific items (a “Shady 99 Anniversary” t-shirt and two “Shady Records 25th Anniversary” items). As is developed below, the Delegate found this evidentiary package — despite its volume — fell well short of establishing either qualifying use of the registered marks themselves, or that any use shown was properly authorised by the registered owner.

The statutory framework and onus

Under s 92(4)(b), an applicant may seek removal on the basis that the mark was not used, in good faith, by the registered owner (or an authorised user) in Australia during the three-year period ending one month before the application for removal (the “Relevant Period”). Once an application is made, ss 100(1)(c) and 100(3) place the onus squarely on the registered owner to establish, on the balance of probabilities, either use (by itself or an authorised user) or the existence of obstacles to use. This is a persuasive, not merely evidential, onus — the Registrar reiterated that it is the trade mark owner who must affirmatively discharge it, not the removal applicant who must disprove use.

This allocation of onus is significant in practice: an opponent to removal cannot rely on inference, plausibility, or the sheer scale of a business to fill evidentiary gaps. The Delegate was explicit that submissions inviting an inference of use or control — rather than pointing to direct, corroborated evidence — invert the onus and will not succeed.

What counts as “use” — and the evidentiary standard required

Use as a trade mark requires use of the sign as a badge of origin in the course of trade — actual dealings, offers for sale, or objectively manifested preparatory steps toward sale. The decision restates several evidentiary principles that owners should treat as a checklist when compiling non-use evidence:

• A single bona fide act of use can suffice, but if an owner is relying on isolated instances, the standard of proof required is high — described as needing to be, “if not conclusive proof, at any rate overwhelmingly convincing proof.” Where few acts are relied upon, each must be robust.
• Undated evidence carries little or no weight. Material that cannot be shown to fall within the Relevant Period does not assist, however clearly it shows use of the mark at some point in time.
• Bald assertions unsupported by dated documentary evidence attract little weight. General declarations of an ongoing course of trade, without invoices, dated screenshots, or equivalent, will not discharge the onus.
• Internal or circumstantial documents carry limited weight absent corroboration.
• The mark actually used must be substantially identical to the registered mark. The test requires a side-by-side comparison assessing whether a total impression of similarity emerges. Composite or elaborated signs — here, examples included “SHADY DEMOLITION,” “THE SHADY BUNCH,” “SHADY VS EVERYBODY,” and “WILL THE REAL SLIM SHADY PLEASE STAND UP” — were found not to be substantially identical to the registered word marks SHADY and SHADY LIMITED, because the additional words and devices substantially altered the identity of the marks. Even the concession that “SHADY LIMITED” itself was not used at all could not be salvaged merely by asserting it was substantially identical to “SHADY.”

On the facts, while there was some evidence of a small amount of use of the word “SHADY” alone on limited clothing items in Australia during the Relevant Period, there was no evidence of use at all in relation to many of the goods for which removal was sought (for example, leather goods, handbags, umbrellas, walking sticks, and saddlery in class 18). For the broad class 25 specification (extending to swimwear, wedding gowns, denim jackets and formal suits), evidence of use for a narrow range of items (t-shirts, jumpers, jackets, beanies, caps) did not establish use across — or a rational basis to infer common brand extension across — the full breadth of the specification.

Practical takeaway: owners relying on merchandising, licensing, or brand-extension activity should maintain a contemporaneous, dated evidentiary trail mapped against each class and item in the specification, and should be alert to whether composite branding (adding slogans, sub-brands, or logos) may be found not “substantially identical” to the registered mark as filed.

Authorised use and the “actual control argument

The most instructive part of the decision concerns authorised use. Section 7(3) deems authorised use to be use by the registered owner; s 8 defines an authorised user as one who uses the mark “under the control of” the owner, including through quality control (s 8(3)) exercised over goods dealt with by another person.

Virtually all of the use shown in evidence was not by Mr Mathers personally, but through channels — the “Eminem” and “Shady Records” websites, online stores, and social media accounts — that the evidence suggested were operated by, or through, Interscope Records, his record label. This shifted the analysis squarely onto whether that use was “authorised,” which in turn required proof of actual control.

The Delegate applied the Full Federal Court’s reasoning in Lodestar Anstalt v Campari America LLC, which establishes that bare contractual power to control — such as the mere existence of a licence — is not sufficient; what is required is evidence of active control in fact. Control is a question of fact and degree, and may be demonstrated through quality control, financial control, or other relevant forms of control, or in some circumstances through evidence of a “unity of purpose” (such as common directorship) — though such unity is never simply assumed.

Counsel for the Opponent argued that it was “not realistic” to infer that a performer of Mr Mathers’s fame did not exercise sufficient control over his own image and related enterprises, and that he need not personally sell merchandise or inspect production to establish control. The Delegate rejected this framing as inverting the onus: it is not for the tribunal to assume control from fame or business scale; it is for the owner to prove it. The only evidence going to the relationship with Interscope was a general statement, from the owner’s legal counsel rather than the owner himself, that “the record company manages the distribution of goods on his behalf.” No explanation of the legal, financial, or quality-control relationship was provided, and there was no direct evidence from Mr Mathers at all. A social media post suggesting some “permission or unspecified association” with an account fell short of establishing actual control over trade mark use.

The Delegate expressly acknowledged that performers commonly relinquish or restructure control through contractual arrangements with labels or licensees, and that these arrangements can be complex — but that is precisely why some corroborated explanation of the arrangement (even short of exhaustive detail) is required. A persona and a trade mark are legally distinct, and evidence of association between the two does not, without more, establish control over the mark.

Practical takeaway: where use is exercised through a related entity, agent, licensee, or corporate group member, owners must be prepared to adduce direct evidence — ideally from a person with actual knowledge of the arrangement, not merely counsel — describing the specific mechanism of control (quality control protocols, approval rights, financial arrangements, or comparable indicia), rather than relying on inference from fame, scale, or a general “the label handles this” style statement.

The discretion under s 101(3)

Even having failed to prove use or authorised use, an owner may still avoid removal if the Registrar exercises the broad discretion in s 101(3), which is unfettered but must be exercised having regard to the purpose of Part 9 — protecting Register integrity while accommodating owners’ interests where reasonable. Relevant factors drawn from authorities such as Ritz Hotel, Paragon, Henschke, and Trident Seafoods v Trident Foods include abandonment, residual reputation, post-Relevant-Period sales, and the likelihood of consumer confusion if the marks were removed.

Here, the Delegate accepted Mr Mathers’s very substantial reputation as a performer and via the “Slim Shady” persona, but found that this reputation resided in him as an artist and in his persona and works — not in the Trade Marks as badges of origin for the specific Registered Goods. The evidence did not establish a rational basis for inferring that consumers would understand the registered owner to be the trade source of the goods, nor did it explore category expansion in a way that would ground a finding of likely confusion. The discretion was accordingly not exercised, and partial removal was ordered, with costs awarded against the Opponent.

Key lessons for trade mark owners

1. Maintain dated, corroborated, class-and-item-specific evidence of use — undated material and bare assertions are largely worthless in non-use proceedings.
2. Watch for “substantial identity” risk where marketing uses composite branding, sub-brands, or slogans layered on the registered mark.
3. Where use occurs through licensees, labels, related companies, or agents, document and be ready to prove actual control — quality control mechanisms, approval processes, or financial control — with first-hand evidence, not general statements from lawyers.
4. Fame or commercial scale alone will not support an inference of control or of consumer-facing reputation attaching to the mark itself; the two are legally distinct and must be separately evidenced.
5. The s 101(3) discretion is a genuine safety net but requires reputation to be tied to the mark as a badge of origin for the specific goods at issue, not merely to the individual or brand generally.