Hands (IP) Holdings Pty Ltd v Arcelik Anonim Sirketi
[2025] ATMO 177
•4 September 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hands (IP) Holdings Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Arcelik Anonim Sirketi to remove trade mark numbers 1573977 (class 9) and 1647755 (classes 7, 9 and 11) - ALTIUS - in the name of Hands (IP) Holdings Pty Ltd
Delegate: | Sheona Robertson |
Representation: | Opponent: Chrysiliou IP Applicant: Pizzeys Patent and Trade Mark Attorneys Pty Ltd |
Decision: | 2025 ATMO 177 Trade Marks Act 1995 (Cth) – application under section 92 – evidence shows use of the trade mark during the relevant period for a subset of the goods – exercise of Registrar’s discretion appropriate for a further subset of the goods – trade mark registrations to be removed for some goods |
Background
On 7 June 2023 Arcelik Anonim Sirketi (‘Removal Applicant’) filed applications for removal (‘Removal Applications’) of the following trade mark registrations (together, ‘Registrations’) from the Australian Register of Trade Marks (‘Register’) for non-use pursuant to ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’):
| Trade Mark | ALTIUS | |
| Registration number | 1573977 | 1647755 |
| Filing date | 12 August 2013 | 18 September 2014 |
| Goods | Class 9: Digital televisions; electrical apparatus incorporating televisions; high definition televisions; liquid crystal display (LCD) televisions; plasma televisions; televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD players; DVD recorders | Class 7: Electric kitchen machines for food preparation (other than cooking); Machines for the preparation of foodstuffs (electric, kitchen), other than cooking; Machines for use in the preparation of food (not cooking); Machines for use in the processing of foodstuffs (not cooking or refrigerating), Vacuum cleaners; electric blenders; steam cleaners; juicers Class 9: Digital televisions; electrical apparatus incorporating televisions; high definition televisions; liquid crystal display (LCD) televisions; plasma televisions; televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD players; DVD recorders; portable DVD players; personal video records; DVD micro system; set top boxes; eBook readers; computers and accessories including monitors, wireless keyboard, software; speakers; tablets; portable scanners and scanners; printers; global positioning systems (GPS); MP3 players and accessories including speaker docks and portable speaker docks; turn table; clock radio with MP3 player dock; radios and digital radios; car radios; CB radio; clock radios; portable digital audio broadcasting radios; webcams; USB sticks; power banks; data link cables; external hard drives; Wi Fi signal boosters; HDMI cables; TV antenna, antenna cables; universal remote control; walkie talkies; power meters; surge board; remote control socket; electronic baby monitoring (listening) devices; travel adaptors for electric plugs; turntables; earphones and headphones, powerboards, adaptors, extension lead Class 11: Apparatus for cooking; Appliances for cooking; Commercial cooking apparatus; Cooking appliances; Cooking ovens; Cooking units; Cooking utensils, electric; Electric domestic cooking appliances; Electrical appliances for cooking; Electrical cooking apparatus; Electrical cooking utensils; Gas cooking appliances; Microwave ovens (cooking apparatus); Kitchen appliances; toaster, kettle, cookers, fans, heaters, microwave ovens, foot spa, coffee maker, frying pans, popcorn maker, electric blankets |
In this decision, a reference to ‘Trade Marks’ is a reference to the ‘ALTIUS’ trade mark the subject of either or both of the Registrations.
The Removal Applications sought removal in respect of all the goods for which the Registrations are registered (together, ‘Goods’).
Hands (IP) Holdings Pty Ltd (‘Removal Opponent’) filed notices of intention to oppose the Removal Applications, followed by statements of grounds and particulars (‘SGPs’). The Removal Applicant subsequently filed notices of intention to defend the Removal Applications.
The same evidence was filed in each opposition. The Removal Opponent filed the following evidence in support:
Declaration made on 16 January 2024 by Ian Aikman, Group General Manager of Tempo (Aust) Pty Ltd (‘Tempo Aust’) and the Removal Opponent (together, ‘Tempo Group’), with Annexures ALT-1 to ALT-8 (‘Aikman’).
Declaration made on 16 January 2024 by Kerry Chrysiliou, registered patent and trade marks attorney and director of Chrysiliou IP Pty Limited, representatives for Tempo Group, and Annexures KC-1 to KC-9 (‘KC Declaration’).
The Removal Applicant filed as evidence in answer a declaration made on 17 April 2024 by Julie Maree Simpson, a registered trade marks attorney at Pizzeys Patent and Trade Mark Attorneys, representatives for the Removal Applicant, with Annexures JMS-1 to JMS-3 (‘Simpson’).
The Removal Opponent filed as evidence in reply a declaration made on 25 June 2024 by Andros Chrysiliou, trade marks attorney and lawyer at Chrysiliou IP, with Annexures AC1 to AC7 (‘AC Declaration’).
Aikman contains a clause to the effect that information disclosed in that declaration, particularly as it relates to sales information and information about the Removal Opponent or its related entities, is regarded as confidential. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1] Arguably, there are sensitive commercial matters in this declaration which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the extent necessary to provide sensible reasons for my decision.
[1] [2008] ATMO 17 (Hearing Officer Thompson).
Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing. The Removal Applicant filed a request for a decision on the written record. The Removal Opponent requested an oral hearing. The Removal Opponent filed written submissions on 5 June 2025. The Removal Applicant did not file written submissions.
The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks (‘Registrar’) and was heard by video conference on 19 June 2025. At the hearing the Removal Opponent was represented by Kerry Chrysiliou of Chrysiliou IP. The Removal Applicant was not represented at the hearing.
I have decided this matter as required by s 101 of the Act. In doing so I take account of the evidence as well as the Removal Opponent’s written and oral submissions.
Removal Opponent’s evidence
Tempo Group is a supplier to retailers in the consumer electronics and home appliances market. They work with manufacturing partners to develop and deliver products under retailer private label brands. Tempo Group’s product categories include audio visual, refrigeration, laundry, kitchen, heating and cooling, food and beverage, cleaning, personal care and sporting goods and appliances, and related accessories. Tempo Group manages the whole supply chain from product selection to prototyping, manufacturing, shipping, product launch and after-sales support.
Annexures KC-1 and KC-2 to the KC Declaration contain current and historical company extracts for Tempo Group. Tempo Aust was registered in August 2003 and the Removal Opponent was registered in June 2013. The entities of Tempo Group share three of the same directors and the same registered address. However, Tempo Aust has an additional director. Tempo Aust is wholly owned by another entity named ‘Tempo Group Holdings Pty Limited’. The Removal Opponent is wholly owned by an entity named ‘A.C.N. 139 940 113 PTY LTD’. No details are provided in respect of these additional entities.
Annexure ALT-1 to Aikman contains historical extracts from (‘Removal Opponent’s Website’) which contains information about the business activities of Tempo Group.
It is declared in Aikman that ALTIUS was conceived by the marketing team and executives of the Removal Opponent, to be used in association with home appliances and domestic electrical goods and accessories.
Annexure ALT-2 to Aikman contains sample invoices of sales made by the Removal Opponent under the ALTIUS trade mark to various retailers between 25 August 2022 and 3 May 2023. The invoices are in respect of a range of products including LED LCD TV and DVD combinations, TV wall mounts, and smart televisions with car adaptors. Sales information in respect of fans sold under the Trade Marks are also provided in Aikman.
Annexures ALT-3 to ALT-6 of Aikman contain historical screenshots dated between 3 November 2022 and 17 April 2023 from the website of BCF, an Australian retailer of the Removal Opponent’s products. The screenshots feature fans, smart televisions, a television and DVD combination, TV mount hardware and a wireless router, all of which are offered for sale under the Trade Marks.
Annexure ALT-7 to Aikman contains a historical screenshot dated 23 April 2021 from the website of The Good Guys, another of the Removal Opponent’s retail partners. This screenshot features smart watches and fitness trackers sold under the Trade Marks.
Annexure ALT-8 to Aikman contains a summary of sales of goods sold by the Removal Opponent to various retailers in Australia under the Trade Marks between 20 November 2017 and 28 February 2024. The products sold during this period include collapsible laundry baskets, smart door bells, solar batteries, bluetooth speakers, smart cameras, tyre inflaters, heads up displays, folding fans, portable fridges, solar inverters, routers, TV wall mounts, PV panels, DVD headrests, smart watches, fitness trackers, smart televisions with and without car adaptors, and LED LCD television and DVD combinations.
Annexure KC-3 to the KC Declaration contains a screenshot from the Removal Opponent’s Website which refers to the Removal Opponent’s plans to sell solar PV modules, home batteries and inverters in Australia from 2023. Annexures KC-4 to KC-9 to the KC Declaration contain data sheets and installation manuals in relation to home batteries, solar PV modules and inverters provided under the Trade Marks. Each of the sheets and manuals are headed with ‘ALTIUS’ and include a line which reads ‘Distributed by Tempo (Aust) Pty Ltd’. The installation manuals were first produced in November and December 2022.
The AC Declaration largely concerns evidence of online marketing practices of electrical and department stores in respect of products the same as or similar to the Goods. Annexures AC1 to AC4 contain extracts from the website showing, respectively, information about the Appliances Online services, and ranges of electrical appliances sold under the LG, Samsung and Hisense brands. Annexures AC5 and AC6 contain extracts from the website relating to the Kogan business and electrical appliances sold by the business. Annexure AC7 contains extracts from the Wayback Machine containing historical versions, dated 2022, of searches similar to those contained in Annexures AC1 to AC6.
Removal Applicant’s evidence
The Removal Applicant is a Turkish multinational manufacturer of household appliances. The Removal Applicant engages in the production, marketing and after-sale services of durable goods and their components. Its products include white goods and small home appliances.
The Removal Applicant applied to extend protection to the following International Registrations Designating Australia (‘IRDAs’):
| Trade Mark | International Registration number | Australian trade mark number | Goods |
| 1327402 | 2369639 | Class 7: Electric kitchen machines for chopping, grinding, crushing, mixing and mincing fooodstuff, electric cleaning machines for cleaning floors, carpets or floorings, vacuum cleaners and parts thereof. Class 11: Heating and steam generating installations; stoves for heating purposes using solid, liquid or gas fuels; electric stoves for heating purposes; kitchen stoves; installations for air-conditioning and ventilating; cooling installations and freezers; electric and gas-powered devices, installations and apparatus for cooking, drying and boiling; water softening apparatus; water purification apparatus; water purification installations; waste water purification installations; industrial type installations for cooking, drying and cooling purposes. | |
| 1327402 | 2146340 | Class 7: Fuel dispensing pumps for service stations, self-regulating fuel pumps; washing machines, laundry washing machines, dishwashers, spin driers (not heated). Class 8: Tools and apparatus included in this class for shaving, epilation, manicure, pedicure and personal beauty care use; electrical hair straighteners and electrical hair curlers; scissors; electric or non-electric irons; steam irons. Class 11: Electric laundry driers; hair driers; hand drying apparatus. |
Annexures JMS-1 and JMS-2 to Simpson contain extracts of the IRDAs from the Register.
The Removal Applicant holds the website Annexure JMS-3 to Simpson contains extracts from this website showing ALTUS is one of 22 brands owned or licensed by the Removal Applicant and that the Removal Applicant has subsidiaries and/or production facilities in up to 70 countries.
Discussion
Section 92 of the Act relevantly provides:
(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. ...
For the purposes of s 92(4)(b) of the Act, the period in which the Removal Opponent must establish use of the Trade Mark in good faith is the three-year period ending on 7 May 2023 (‘Relevant Period’).
An application for removal under s 92(4)(b) may only be made after a period of five years has passed from the filing date of the application.[2] The applications for the Trade Marks were filed prior to 24 February 2019, being more than five years prior to the filing date of the Removal Applications.
[2] See Act s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response
Part 1 and Other Measures) Act 2018 (Cth) ss 45-46.
Although ss 92(4)(a) and 92(4)(b) of the Act provide alternative grounds for removal, once a trade mark has been registered for a period of five years the provisions of s 92(4)(a) are considered to effectively merge with s 92(4)(b). Accordingly, for the purposes of the present Removal Applications, I need only consider s 92(4)(b) of the Act. The Removal Opponent must establish that it, or its authorised user, has used the Trade Marks, or a substantially identical trade mark, during the Relevant Period, or that there was an obstacle to use during the Relevant Period.[3]
[3] Act s 100(3).
The Removal Opponent bears the burden of rebutting the non-use allegation.[4] The required standard of proof is the ordinary civil standard of the balance of probabilities.[5]
[4] Act s 100(1)(c).
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
In accordance with s 101 of the Act, I may decide to remove one or both of the Trade Marks from the Register for all or some of the goods identified in the Removal Applications, or if satisfied that it is reasonable to do so, decide not to remove either or both of the Trade Marks even if the grounds under which the Removal Applications were made have been established.
Use of the Trade Marks during the Relevant Period
The ‘use’ required to be demonstrated by the Removal Opponent is ‘use as a trade mark’, that is, use of the sign as a badge of origin to indicate a connection in the course of trade between the goods and the person applying the sign to, or in relation to, the goods.[6] Use ‘in the course of trade’ means either an actual dealing in the goods, an offer for sale of the goods, or an intention to offer the goods for sale evidenced by preparatory steps demonstrating an objective commitment to use the trade mark.[7]
[6] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[7] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 415, 433-434 (Deane J); Winton Shire Council v Lomas (2002) FCA 288, [36] (Spender J); Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [40] (Drummond J) (‘Woolly Bull’).
Use of a trade mark ‘in good faith’ is to be understood as use that is ‘real, as opposed to token, use in a commercial sense’.[8] 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) of the Act,[9] 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’.[10] Little weight is to be given to assertions of use which are not supported by documentary evidence.[11]
[8] Woolly Bull (n 7), [16].
[9] Ibid [17].
[10] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[11] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno); Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).
Use of the Trade Marks by an authorised user, as defined by s 8 of the Act, is to be taken to be use of the Trade Marks by the Removal Opponent.[12]
[12] Act s 7(3).
It is stated in the SGPs that the applications for the Trade Marks were filed with an intention in good faith to use the Trade Marks as registered, or with additions or alterations not substantially affecting the identity of ALTIUS. It is noted that the Trade Marks have been used in three different formats, namely in upper case letters, in a fancy font and with the first letter capitalised. I accept that these representations do not substantially affect the identity of the Trade Marks and that each of these representations is to be taken as use of the Trade Marks.
The Goods are numerous and it is necessary to assess the evidence provided to identify each of the individual Goods for which use has been shown.
The Removal Opponent submits that use has been established in respect of the following class 9 Goods:
Digital televisions; electrical apparatus incorporating televisions; high definition televisions; liquid crystal display (LCD) televisions; plasma televisions; televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD players; DVD recorders; portable DVD players; personal video records; DVD micro system; set top boxes; speakers; HDMI cables; TV antenna, antenna cables; universal remote control; travel adaptors for electric plugs; earphones and headphones, powerboards, adaptors, extension lead
The Removal Opponent submits that many of the Goods highlighted above fall within the categories of ‘television appliances’ or ‘television hardware and accessories’. It is contended that televisions capable of being used for forms of audiovisual communication such as video or voice calls, and speakers fall within the category of ‘apparatus for use in audio-visual communication’. The Removal Opponent further submits that for those items not included in the above list, these are Goods which are very closely associated with, or used in conjunction with, the televisions, television hardware and accessories, DVD players, recorders and routers in respect of which use has been shown.
According to Annexure ALT-8 to Aikman, the sales of ALTIUS branded products that occurred during the Relevant Period included smart door bells, bluetooth speakers, a smart camera, a heads up display, a fan, a TV wall mount, a DVD headrest, smart watches, fitness trackers, smart televisions with car adaptors, and LED LCD television and DVD combinations. It is clear from Annexures ALT-3 to ALT-7 of Aikman that products offered for sale under the Trade Marks by the Removal Opponent’s retail partners during the Relevant Period included fans, smart televisions, television and DVD combinations, TV mount hardware, wireless routers, smart watches and fitness trackers.
The sample invoices contained in Annexure ALT-2 to Aikman do not reference ALTIUS, but if I accept Mr Aikman’s declared statement that these invoices relate solely to sales of goods made under the Trade Marks in Australia, they do little more than reinforce that sales of LED LCD TV and DVD combinations, TV wall mounts, and high definition smart televisions with car adaptors were made by the Removal Opponent to retailers during the Relevant Period.
I accept that most televisions produced today are digital in nature, in that they receive digital broadcast signals as opposed to analogue ones. I accept also that television and DVD player combinations can be described as ‘electrical apparatus incorporating televisions’. I accept that DVD headrests are in the nature of ‘portable DVD players’, albeit ones that incorporate a screen. However, in the absence of details of the specifications for the Removal Opponent’s smart televisions, I do not accept the Removal Opponent’s submissions that smart televisions are ‘apparatus for use in audio-visual communication’.
No evidence has been provided of use of the Trade Marks with respect to HDMI cables, TV antennas, antenna cables, or remote controls. However, I consider it is likely that televisions and other of the ALTIUS products would be sold with the cables that would enable them to function, and accordingly I accept that there has been use of the Trade Marks with respect to HDMI cables. It is also clear from Annexure ALT-5 to Aikman that adaptors are sold with, at least, the ALTIUS smart televisions.
It is not clear whether the DVD products referred to in the evidence are in the nature of DVD recorders or DVD players, but based on the context in which these goods appear to be sold (i.e. in a camping goods store which sells compact electronic products designed for use while travelling, and in cars and campers) as well as the Removal Opponent’s oral submissions, I understand the evidence relates to televisions or screens incorporating DVD players, rather than DVD recorders.
Considering the above and having regard to the evidence, I accept that the Removal Opponent has evidenced use of the Trade Marks during the Relevant Period in respect of the following in class 9:
Digital televisions; electrical apparatus incorporating televisions; high definition televisions; liquid crystal display (LCD) televisions; televisions; televisions incorporating video recorders; DVD players; portable DVD players; speakers; HDMI cables; travel adaptors for electric plugs; adaptors (‘Used Goods’)
With respect to the Goods in classes 7 and 11, the Removal Opponent states that evidence has been shown in respect fans and that use of the balance of these Goods has not been specifically evidenced. However, the Removal Opponent submits that the balance of these Goods are in the nature of electrical goods and appliances, and the Removal Opponent is in the business of such goods. The Removal Opponent further submits that the class 7 and class 11 goods are often sold under the same trade marks as the goods for which use has been shown, and are positioned in a similar place in stores.
I do not consider there is a sufficiently close nexus between the machines for food preparation, cleaning appliances, electric cooking utensils and appliances, heating appliances, or personal care appliances that broadly categorise the Goods in classes 7 and 11, and the Goods for which evidence of use of the Trade Marks during the Relevant Period has not been established. In my view, the only similarity between these goods is that they typically operate by way of electricity. While electrical goods may be sold in the same stores, I do not agree that the respective goods are likely to be displayed in a similar location in such stores. Rather, they are likely to be segregated, with the respective product categories clearly signposted. Accordingly, with the exception of fans, I do not consider there has been use of any of Trade Marks in respect of the class 7 or class 11 Goods during the Relevant Period.
The Goods in respect of which trade mark registration number 1647755 is registered, but evidence of use has not been established, are as follows:
Class 7: Electric kitchen machines for food preparation (other than cooking); Machines for the preparation of foodstuffs (electric, kitchen), other than cooking; Machines for use in the preparation of food (not cooking); Machines for use in the processing of foodstuffs (not cooking or refrigerating), Vacuum cleaners; electric blenders; steam cleaners; juicers
Class 9: Plasma televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD recorders; personal video records; DVD micro system; set top boxes; eBook readers; computers and accessories including monitors, wireless keyboard, software; tablets; portable scanners and scanners; printers; global positioning systems (GPS); MP3 players and accessories including speaker docks and portable speaker docks; turn table; clock radio with MP3 player dock; radios and digital radios; car radios; CB radio; clock radios; portable digital audio broadcasting radios; webcams; USB sticks; power banks; data link cables; external hard drives; Wi Fi signal boosters; TV antenna, antenna cables; universal remote control; walkie talkies; power meters; surge board; remote control socket; electronic baby monitoring (listening) devices; turntables; earphones and headphones, powerboards, extension lead
Class 11: Apparatus for cooking; Appliances for cooking; Commercial cooking apparatus; Cooking appliances; Cooking ovens; Cooking units; Cooking utensils, electric; Electric domestic cooking appliances; Electrical appliances for cooking; Electrical cooking apparatus; Electrical cooking utensils; Gas cooking appliances; Microwave ovens (cooking apparatus); Kitchen appliances; toaster, kettle, cookers, heaters, microwave ovens, foot spa, coffee maker, frying pans, popcorn maker, electric blankets
(‘Remaining Goods’)
For clarity, the Remaining Goods in class 9 in respect of which trade mark registration number 1573977 is registered are as follows:
Class 9: Plasma televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD recorders
It is apparent that the Removal Opponent is an IP holding company and that actual use of the Trade Marks has been by way of Tempo Aust. It is stated in the SGPs that on the day the applications for the Trade Marks were filed, the Removal Opponent had an intention in good faith to authorise the use of the Trade Marks in Australia in relation to all the Goods, and that the Removal Opponent has in fact authorised such use. The Removal Opponent submits that the intention to use or authorise use of the Trade Marks is evidenced by the actual sales of products under the Trade Marks during the Relevant Period and the Removal Opponent’s account, provided in Aikman, of the conceptualisation of the Trade Marks. It is declared in Aikman that the entities comprising Tempo Group share a controlling board of directors as well as common trading executives who run the business operations. The Removal Opponent further submits that there is a unity of purpose and common directorship between the entities of Tempo Group, and accordingly that the Removal Opponent controls the use of the Trade Marks by Tempo Aust consistent with the principles in Trident Seafoods Corporation v Trident Foods Pty Ltd[13] (‘Trident’).
[13] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).
In Trident, the Full Court considered it significant that at all relevant times the two companies had the same directors; this allowed an inference that the two companies operated with a unity of purpose.[14] The same cannot be said of the two entities of Tempo Group. Contrary to the claims of the Removal Opponent, on inspection the evidence shows that the two entities share three of the same directors but that Tempo Aust has an additional director, and the entities are held by different shareholders, being companies about which no information has been provided. In light of the inconsistencies in the directorships and shareholdings of the Removal Opponent and Tempo Aust, it is not established that the entities share a unity of purpose. Further, no evidence has been provided about any shared processes between the owner and user of the Trade Marks that would illustrate actual control or authorisation by the Removal Opponent over the use by Tempo Aust of the Trade Marks, having regard to the principles discussed in Trident. For these reasons, I cannot be satisfied that Tempo Aust is an authorised user of the Trade Mark within the meaning of s 8 of the Act. Accordingly, the evidence that establishes use of the Trade Marks in respect of the Used Goods during the Relevant Period cannot be characterised as authorised use by the Removal Opponent as the registered owner of the Trade Marks.
[14] Ibid [45].
It is stated in the SGPs that, to the extent the Removal Opponent does not establish use of the Trade Marks within the Relevant Period in respect of all the Goods, the Registrar should exercise her discretion not to restrict or remove the Trade Marks from the Register. I must now consider whether the Registrar’s discretion ought to be exercised.
Registrar’s discretion
The Act provides the Registrar with a broad discretion not to remove the Trade Marks from the Register in respect of any, or all, of the goods for which removal has been sought.[15]
[15] Act s 101(3).
If satisfied that it is reasonable to do so, the Registrar may decide that the Trade Marks should not be removed from the Register, even if the grounds on which the Removal Applications were made has been established.[16] The Removal Opponent bears the onus of persuading me that it is reasonable that the Trade Marks should not be removed.[17]
[16] Ibid.
[17] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (‘PDP Capital’); Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
The exercise of discretion is not one that should be exercised lightly. As stated by Jacob J in Laboratoire De La Mer Trade Marks:
There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[18]
[18] [2002] FSR 51 (Ch) 790, [19(a)].
In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[19] the Full Court summarised the considerations relevant to the exercise of the Registrar’s discretion:
[19] PDP Capital (n 17).
whether there has been abandonment of the trade mark;
whether the registered proprietor of the mark still has a residual reputation in the mark;
whether there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
whether the applicant for removal had entered the market in knowledge of the registered mark;
whether the registered proprietors were aware of the applicant’s sales under the mark;
whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[20]
[20] Ibid [153].
The Removal Opponent notes that the public interest in avoiding confusion amongst consumers is a significant aspect of the exercise of the Registrar’s discretion.[21]
[21] RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10, [131] (Nicholas, Burley and Hespe JJ); Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd [2025] FCA 218, [43]-[44] (Bennett J).
Having regard to the integrity of the Register, a decision to exercise the discretion is guided by the public interest, although the private commercial interests of the relevant parties also need to be recognised.[22]
[22] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (Flick J).
Firstly, with respect to the authorised use of the Trade Marks, as discussed above I am not satisfied that the evidence of use of the Trade Marks meets the meaning of authorised use provided in s 8 of the Act. The Removal Opponent notes in this regard that the onus to rebut the Removal Opponent’s submissions rests with the Removal Applicant. The Removal Applicant has not filed submissions which bring Tempo Aust’s authority to use the Trade Marks into issue, nor has it contested the Removal Opponent’s account of the authorisation of use of the Trade Marks by Tempo Aust.
It is clear from the evidence provided that, although the use of the Trade Marks during the Relevant Period was by an entity that does not qualify as an authorised user within the meaning of the Act, the Trade Marks were not abandoned during the Relevant Period. In my view, the corporate relationship between the two entities of Tempo Group is such that it is unlikely that Tempo Aust used the Trade Marks without the knowledge and consent of the Removal Opponent. In the absence of any submissions on this point by the Removal Applicant, and noting the evidence provided with respect to the Used Goods by an entity which shares an obvious connection to the Removal Opponent, I am prepared to accept the declaratory statement by Mr Aikman, as the General Manager of Tempo Group, that the Trade Marks are held under common control and authority and that the Opponent authorises Tempo Aust’s use of the Trade Marks.[23] On balance, I am satisfied that the public interest is served by an exercise of the Registrar’s discretion with respect to the Used Goods. The next consideration is whether the discretion ought to be exercised with respect to the Remaining Goods.
[23] Aikman, [3].
Of the Remaining Goods, there is only evidence that the Trade Marks have been used outside of the Relevant Period with respect to portable refrigerators, which I consider to be a type of kitchen appliance within the scope of the Goods in class 11. Based on Annexure ALT-8 to Aikman the first sale of a portable refrigerator occurred on 30 September 2023, being less than five months from the end of the Relevant Period. Having regard to the lengthy product development process outlined in Annexure ALT-1 to Aikman, I am satisfied that during the Relevant Period the Removal Opponent had an objective commitment to use the Trade Marks with respect to portable refrigerators. Accordingly, it is appropriate to allow the Trade Marks to remain registered with respect to portable refrigerators. The Removal Opponent has not made any submissions regarding its future intention to use the Trade Marks for any of the Remaining Goods.
It is stated in the SGPs that the private interests of the Removal Opponent in maintaining the Registrations outweigh the private interests of the Removal Applicant in having the Registrations removed. The Removal Opponent submits that the interests of the Removal Applicant in the Australian market are unclear, which does not aid the determination of the interests of the parties for the purpose of exercising the discretion. I note that as the applicant of the IRDAs, the Removal Applicant has an obvious private interest in securing protection of the applications. However, I accept that in the absence of submissions from the Removal Applicant as to their private interests, I am unable to determine whether the private interests of the Removal Applicant outweigh those of the Removal Opponent. Accordingly, my consideration of the reasonableness of an exercise of the Registrar’s discretion is limited to weighing the interests of the Removal Opponent against the public interest.
It is also stated in the SGPs that the reputation of the Trade Marks arising from use by the Removal Opponent or its authorised user means that the unauthorised use of the same or a similar trade mark by another person in respect of the Goods is likely to cause confusion. I accept that there is a high degree of similarity between the trade marks ALTIUS and ALTUS, and that there is some overlap between the goods of the IRDAs and the Goods (albeit primarily in respect of the Remaining Goods and not those for which the Trade Marks have evidently been used). However, I do not consider the evidence of use of the Trade Marks is so extensive that it establishes the reputation of the Removal Opponent with respect to the Goods. I note that the Trade Marks have been registered for more than a decade and the Removal Opponent has adduced very limited evidence of use of the Trade Marks in Australia having regard to the duration of the registration of the Trade Marks. No evidence has been provided of sales volumes, marketing expenditure or extensive promotional and sales activity that would support a conclusion that the Trade Marks’ reputation in the relevant market is so extensive that use of ALTUS would be likely to deceive or cause confusion.
The Removal Opponent submits that the AC Declaration establishes that it is common for traders in consumer electrical appliances to use the same trade mark in respect of several different products, and that this practice existed during the Relevant Period. It is the Removal Opponent’s contention that such practices mean that confusion is likely to arise if related ranges of products are sold under very similar trade marks by different traders, and accordingly confusion would be likely if the Removal Applicant were able to use the ALTUS trade mark in respect of products which are the same as or similar to the Goods.
While I accept that the goods of both the Removal Opponent and the Removal Applicant are in the nature of, broadly speaking, ‘consumer electrical appliances’, this is not in itself determinative of whether I should exercise the discretion. I do not consider it is in the public interest to allow the Trade Marks to remain registered in respect of a wider variety of goods than the Goods in respect of which they have been used. The partial removal of the Trade Marks with respect to the Remaining Goods (other than portable refrigerators) will not significantly impact the Removal Opponent’s business as the Trade Marks will remain protected with respect to the Goods for which they have been used, and any similar goods or closely related services. I do not agree that there would be a significant risk of consumer confusion because the scope of protection that would remain under the revised specifications for the Registrations would prevent the use of a deceptively similar mark in respect of similar goods or closely related services.
Balancing the relevant considerations and noting the evidence, I am not persuaded that it is appropriate to exercise the discretion to allow the Registrations to remain registered with respect to the Remaining Goods, other than portable refrigerators.
Decision
The Removal Opponent has partly established its opposition to the removal of the Registrations. Accordingly, I direct that trade mark registration numbers 1573977 and 1647755 be removed from the Register in respect of the following Goods only:
| Registration number | Goods |
| 1573977 | Class 9: Plasma televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD recorders |
| 1647755 | Class 7: Electric kitchen machines for food preparation (other than cooking); Machines for the preparation of foodstuffs (electric, kitchen), other than cooking; Machines for use in the preparation of food (not cooking); Machines for use in the processing of foodstuffs (not cooking or refrigerating), Vacuum cleaners; electric blenders; steam cleaners; juicers Class 9: Plasma televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD recorders; personal video records; DVD micro system; set top boxes; eBook readers; computers and accessories including monitors, wireless keyboard, software; tablets; portable scanners and scanners; printers; global positioning systems (GPS); MP3 players and accessories including speaker docks and portable speaker docks; turn table; clock radio with MP3 player dock; radios and digital radios; car radios; CB radio; clock radios; portable digital audio broadcasting radios; webcams; USB sticks; power banks; data link cables; external hard drives; Wi Fi signal boosters; TV antenna, antenna cables; universal remote control; walkie talkies; power meters; surge board; remote control socket; electronic baby monitoring (listening) devices; turntables; earphones and headphones, powerboards, extension lead Class 11: Apparatus for cooking; Appliances for cooking; Commercial cooking apparatus; Cooking appliances; Cooking ovens; Cooking units; Cooking utensils, electric; Electric domestic cooking appliances; Electrical appliances for cooking; Electrical cooking apparatus; Electrical cooking utensils; Gas cooking appliances; Microwave ovens (cooking apparatus); Kitchen appliances (other than portable refrigerators); toaster, kettle, cookers, heaters, microwave ovens, foot spa, coffee maker, frying pans, popcorn maker, electric blankets |
Trade mark registration numbers 1573977 and 1647755 will remain registered in respect of the following Goods:
| Registration number | Goods |
| 1573977 | Class 9: Digital televisions; electrical apparatus incorporating televisions; high definition televisions; liquid crystal display (LCD) televisions; DVD players |
| 1647755 | Class 9: Digital televisions; electrical apparatus incorporating televisions; high definition televisions; liquid crystal display (LCD) televisions; televisions; televisions incorporating video recorders; DVD players; portable DVD players; speakers; HDMI cables; travel adaptors for electric plugs; adaptors Class 11: Portable refrigerators; fans |
If the Registrar is served with a notice of appeal, I direct that the partial removal of the Registrations 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
Both parties requested an award of costs. Neither party has been entirely successful in respect of the applications for removal of trade mark registrations 1573977 and 1647755 from the Register. As such I make no order as to costs.
Sheona Robertson
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 September 2025
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