Iugotec Pty Ltd v J Wagner GmbH - [2025] ATMO 61

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Iugotec Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by J Wagner GmbH to remove trade mark number 2061994 (class 9) - IONIQ - in the name of Iugotec Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Lan Pham of Spruson & Ferguson

Decision:

2025 ATMO 61

Trade Marks Act 1995 (Cth) – application under ss 92(4)(a) and (b) – use of the registered trade mark established for limited goods during the relevant period – exercise of the discretion not appropriate – registration restricted to goods for which the trade mark has been used

Background

This decision is pursuant to an application made on 21 August 2023 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) by J Wagner GmbH (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks:
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Registration Number

2061994

Trade Mark:

IONIQ (‘Trade Mark’)

Filing Date:

13 January 2020

Registration recorded:

21 August 2020

Owner:

Iugotec Pty Ltd

Goods:

Class 9: Computer software programs; Apparatus for the analysis of gas; Measuring apparatus (mass spectrometers) for chemical substances; Portable gas detecting instruments; Scientific apparatus and instruments; Automatic inspection apparatus for industrial use; Detection apparatus for chemical substances (other than for medical use); Gas sensing devices (‘Registered Goods’)

Iugotec Pty Ltd (‘Opponent’) has opposed the Removal Application, filing a Notice of Intention to Oppose the removal of the Trade Mark on 26 October 2023 followed by a Statement of Grounds and Particulars (‘SGP’) on 24 November 2023. The Applicant filed a Notice of Intention to Defend the Removal Application on 15 December 2023.
The Opponent then filed evidence in support of its opposition consisting of a declaration of Ross Farrell, Managing Director of the Opponent, made on 20 March 2024 with Annexure RF-1 and Confident Annexures RF-2 to RF-15 (‘Farrell’). No further evidence was filed.
Once the time for filing evidence had ended, the parties had the opportunity to request a hearing. The Applicant requested a hearing by written submissions and the Opponent did not ask to be heard. The Applicant filed its written submissions, prepared by Lan Pham of Spruson & Ferguson, on 6 February 2025. This matter has been allocated to me to decide as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register for 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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 61
Decision Date: 24 March 2025

CaseChat Overview and Summary

This decision concerns an application by J Wagner GmbH (the Applicant) to remove a trade mark from the Register, opposed by Iugotec Pty Ltd (the Opponent). The dispute arose from the Opponent's claim of use of the trade mark in relation to a mass spectrometer, gas and chemical substance detection device integrated with computer software, used for detecting and analysing biosecurity threats. The Opponent also claimed confidentiality over much of its evidence, including descriptions of the goods for which it alleged use.

The primary legal issue before the Hearing Officer was whether the Opponent had established sufficient use of the trade mark during the relevant period to prevent its removal from the Register. A secondary issue involved the exercise of discretion under section 101(3) of the relevant legislation, which allows the Registrar to decide not to remove a trade mark even if grounds for removal are established, if it is considered reasonable to do so. The Hearing Officer also had to determine how to address the Opponent's confidentiality claims in relation to the evidence presented.

The Hearing Officer adopted the approach from *Source Homeloans Pty Ltd v Coles Group Ltd*, acknowledging that it was necessary to discuss and weigh the evidence to determine the opposition, despite the confidentiality claims. The Hearing Officer found that not all information claimed as confidential was commercially sensitive and endeavoured to preserve confidentiality where possible. The burden of proof rested on the Opponent to establish its grounds of opposition. The Hearing Officer concluded that the Opponent had partly established its opposition by demonstrating use of the trade mark for specific goods. Regarding the discretion under s 101(3), the Hearing Officer noted the lack of submissions from the Opponent on this point and therefore did not consider it appropriate to exercise that discretion.

Consequently, the Hearing Officer directed that the goods for which trade mark registration 2061994 was registered be amended to reflect the specific uses established by the Opponent, namely computer software programs, apparatus for the analysis of gas, measuring apparatus (mass spectrometers) for chemical substances, portable gas detecting instruments, scientific apparatus and instruments, automatic inspection apparatus for industrial use, detection apparatus for chemical substances (other than for medical use), and gas sensing devices, all for use in detecting and analysing biosecurity threats, defence risks, contaminants, and for exhaled breath analysis. In the event of an appeal, the disposition of the trade mark registration would be subject to the decision of the Court. As both parties had achieved a degree of success, the Hearing Officer declined to award costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

In accordance with s 101, the Registrar 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.Opponent’s evidence Much of the information contained in Farrell is claimed as confidential including the description of the goods for which the Opponent claims to have used the Trade Mark. In order to decide this matter and give reasons for my decision, I must discuss and weigh the evidence. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated: The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[10][10] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson). It seems to me that not all of the information claimed as confidential is commercially sensitive. Nevertheless, in giving reasons for my decision below, I have endeavoured to preserve the confidentiality of the Opponent’s evidence to the extent possible. Farrell declares that the Opponent is an engineering, chemical and technology-based company that specialises in providing next generation chemical sensing technologies and innovative solutions for industrial use in many industries, including, food and beverage, agriculture, defence, biosecurity and medical technology sectors. According to Farrell, the Opponent uses the Trade Mark in relation to a mass spectrometer, gas and chemical substance detection device that is integrated with computer software (‘Opponent’s Product’) and used to detect and analyse biosecurity threats.

Decision

Reasons for decision

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 any goods other than the Used Goods. The Opponent bears the burden of persuasion and in the absence of any submissions from the Opponent in respect of the discretion, I do not consider it appropriate to exercise my discretion.Decision The Opponent has partly established its opposition to the Removal Application by demonstrating use of the Trade Mark during the Relevant Period for the Used Goods. Accordingly, I direct that the goods of registration 2061994 be amended to:Computer software programs; Apparatus for the analysis of gas; Measuring apparatus (mass spectrometers) for chemical substances; Portable gas detecting instruments; Scientific apparatus and instruments; Automatic inspection apparatus for industrial use; Detection apparatus for chemical substances (other than for medical use); Gas sensing devices; all the foregoing for use in detecting and analysing biosecurity threats, defence risks, contaminants and for exhaled breath analysis In the event of any appeal of this decision, the disposition of trade mark registration 2061994 shall instead be subject to the decision of the Court. Both parties have requested an award of costs. As both parties have had a degree of success, I decline to award costs.Tracey BergerHearing OfficerOppositions and HearingsTrade Marks and Designs24 March 2025

Ratio Decidendi

Legal Principle Established

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Registration Number	2061994
Trade Mark:	IONIQ (‘Trade Mark’)
Filing Date:	13 January 2020
Registration recorded:	21 August 2020
Owner:	Iugotec Pty Ltd
Goods:	Class 9: Computer software programs; Apparatus for the analysis of gas; Measuring apparatus (mass spectrometers) for chemical substances; Portable gas detecting instruments; Scientific apparatus and instruments; Automatic inspection apparatus for industrial use; Detection apparatus for chemical substances (other than for medical use); Gas sensing devices (‘Registered Goods’)