A decision from the Australian Trade Marks Office shows that even globally famous brands can find themselves on uncertain ground if they cannot demonstrate genuine use of their registered trade marks in the relevant territory.
In Marshall B. Mathers III v Swim Shady Pty Ltd [2026] ATMO 119, Eminem (Marshall Mathers III) suffered a setback in his dispute with Australian beachwear business trading as Swim Shady. Swim Shady sought to remove certain goods from Eminem's existing Australian trade mark registrations for SHADY and SHADY LIMITED on the basis that the marks had not been genuinely used in relation to those goods in Australia.
Although Eminem produced evidence relating to his well-known Slim Shady brand, the Australian Trade Marks Office was not satisfied that this amounted to use of the registered marks. The evidence largely concerned signs such as SLIM SHADY, I'M THE REAL SLIM SHADY and THE DEATH OF SLIM SHADY, which were considered materially different from the registered marks SHADY and SHADY LIMITED.
A further difficulty was that a lot of the evidence related to merchandise sold through Eminem's record label rather than by Eminem personally. The Australian Trade Marks Office found there was insufficient evidence to establish that any such use was authorised and controlled by the registered owner of the marks. Essentially, the evidence did not adequately "join the dots" between Eminem as the trade mark owner and the activities of his record company.
The result was that the registrations were removed for various merchandise-related goods, including clothing, footwear, headwear and bags, although protection remains in other categories such as music and electronics.
Whilst the facts are unusual, the lessons for brand owners are:
- Registered trade marks can become vulnerable to non-use actions where there is insufficient evidence of genuine commercial use.
- Using a modified version of a mark may not preserve a registration if the variation materially alters the mark's distinctive character.
- Where a mark is used by a licensee, affiliate or other third party, businesses should retain clear evidence showing that the registered owner exercises the necessary degree of control over that use.
- Even globally recognised brands must be able to prove use of their registered marks if challenged in the relevant territory.
When faced with a non-use challenge, the real Slim Shady must stand up... with the evidence to prove it.
If you have any questions, or for advice and guidance please contact a member of our Intellectual Property team here.
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