Etoro Group Pty Ltd v ETO Gruppe Technologies GmbH

[2025] ATMO 30

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by ETORO GROUP PTY LTD to an application under section 92 of the Trade Marks Act 1995 (Cth) by ETO GRUPPE TECHNOLOGIES GmbH for removal of trade mark number 1683956 (36) – ETO (Figurative) – in the name of ETORO GROUP PTY LTD

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: GLMR

Decision:

2025 ATMO 30

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 29 August 2023 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by ETO GRUPPE TECHNOLOGIES GmbH (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1683956

Lodgement date

27 March 2015

Services

Class 36: Financial services being investment and brokerage services

(‘Registered Services’)

Owner

ETORO GROUP PTY LTD

Trade Mark

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. ETORO GROUP PTY LTD (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 8 September 2023 and a Statement of Grounds and Particulars (‘SGP’) on 15 September 2023.  The Applicant filed a Notice of Intention to Defend on 16 October 2023.

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Jonathan Barratt, director of ETO Group Pty Limited (‘Barratt declaration’)	19 February 2024	Discussed below
Evidence in answer
None filed
Evidence in reply
None filed

1. On 15 November 2023 the Opponent initially filed, as its evidence, a set of 5 documents, without an accompanying declaration. Upon being informed by this office that, as provided by reg 21.4(1)(b), the evidence had to be in the form of a declaration, the Opponent filed the Barratt declaration which stated ‘Attached herewith are supporting documents…’ but omitted to attach any such documents.  It is apparent from the nature of the course of correspondence between this office and the Opponent that the documents referred to in the Barrett declaration are the documents filed on 15 November 2023, and the Applicant, in its submissions, has treated the Barratt declaration as including those documents.   As such, while they are not strictly part of the Barrett declaration, pursuant to reg 21.15(4) I choose to have regard to the material filed on 15 November 2023 and shall treat these documents as attachments to the Barratt declaration.

   6.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 1 July 2024 the Applicant requested a hearing by written submissions and paid the appropriate fee.  The matter was set down for a hearing on 17 December 2024.  In line with usual practice, a letter was sent to the parties on 13 November 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 9 December 2024 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

   7. I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   The Relevant Provisions

   8. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

      (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   9. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 29 July 2023 (‘relevant period’).

   10. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the Trade Mark,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

   11.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   12.    I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]  In Blount Inc v Registrar of Trade Marks, Branson J observed:

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[3]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

   [3] [1998] FCA 440 (citation omitted).

   13.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   14. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6]  Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[7] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[8] 

   [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [5] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

   [7] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).

   [8] Act s 7(3).

   15.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[9]

   [9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

   Discussion

2. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five[10] years.[11] As the Trade Mark had been registered for more than five years as at the date of the application, I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[12]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

   [10] Or three years for trade marks filed from 24 February 2019 onwards see changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

   [11] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

   [12] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

3. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

4. The Opponent’s evidence in this matter consists of the Barratt Declaration.  Mr Barratt states that he is the director of ETO Group Pty Ltd, the owner of the Trade Mark.  This is either a typo or incorrect, since the owner of the Trade Mark is ETORO GROUP PTY LTD.  Mr Barrett provides no explanation for this discrepancy.  The Barratt Declaration contains the broad assertions that the Trade Mark has been used continuously in commerce since its first use in 2016 and that the use has been ‘consistent and widespread’.

5. The Opponent has provided five documents said to support a claim of continuous and active use of the Trade Mark.  One consists of an advertisement dated 17 September 2023 that postdates the relevant date.  Three documents consist of photos taken at trade fairs, two of which are undated and the third is dated 2022 but clearly was taken in Ho Chi Minh City.  The final document consists of an undated, 4-page brochure that refers to the existence of the ETO Group, but there is no evidence of when this document was created and/or whether it was distributed.  Each of the documents shows the use of the mark depicted below, which, due to the significantly different device element and addition of the stylised word ‘markets’ is not substantially identical to the Trade Mark; indeed, none of the documents depict the Trade Mark without additions or alterations substantially affecting its identity. 

6. In the absence of any documentary evidence showing any use of the Trade Mark at all, let alone use within the relevant period.  I am not satisfied that the Barratt declaration shows evidence of use of the Trade Mark for the Registered Services in the relevant period.

   Obstacles to use

   21.     The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Services in the relevant period, pursuant to s 100(3)(c) and in the interests of completeness I note that I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Services.

   Registrar’s Discretion

   22.     To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Remaining Services.[13] The burden of persuasion falls in this regard falls on the Opponent.[14]

   [13] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [14] Ibid.

   23.     The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services.

   Decision

   24.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1683956 be removed from the Register one month from the date of this decision. 

   25.     If the Registrar is served with a notice of appeal I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

   Costs

   26. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   11 February 2025