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

1. 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’)

1. 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.

2. 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.

3. 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

4. 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 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.

5. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Due to the specifics of these provisions, paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for three years.[2] As the Trade Mark had been registered for three years as at the date of the Removal Application, I need only consider the application for removal under s 92(4)(b) in this case.

   [2] M Davison and I Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 7th edition online, 2022), [70.510].

6. I note that an application under s 92(4)(b) may not be made before a period of three years has passed from the date that the particulars of the Trade Mark were entered on the Register,[3] and I confirm that the Trade Mark had been recorded as registered for three years at the time of the filing of the Removal Application.

   [3] s 93(2).

7. Under s 92(4)(b), the relevant period during which the Removal Opponent must establish use of the Trade Mark is the three year period ending on 21 July 2023 (‘Relevant Period’).

8. The Removal Opponent bears the onus of rebutting an allegation of non-use[4] by establishing, on the balance of probabilities,[5] that it has used the Trade Mark for the Registered Goods during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[6]

   [4] Act s 100(1)(c).

   [5] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J); 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.

   [6] Act s 100(3)(c).

9. In Woolly Bull Enterprises Pty Ltd v Reynolds,[7] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[8] 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’.[9]

   [7] [2001] FCA 261, [16].

   [8] Ibid [17].

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

10. 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

11. 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).

12. 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.

13. 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.

14. The Annexures to Farrell include:

    ·     photographs of the Opponent’s Product being used at sites in Adelaide and Brisbane in December 2020 and June 2021 with database timestamp files, IonIQ logs and timestamps and emails with a customer, and July 2023 with an email from a customer (‘Photograph evidence’).

    ·     an email from the Opponent dated  6 March 2020 referring to a Quick Reference Guide for use of the Opponent’s Product and a copy of that Guide;[11]

    ·     screenshots of database files and results from use of the Opponent’s Product;

    ·     PowerPoint slides and brochures from presentations in February, March and November 2021 and April 2022;

    ·     an undated marketing video shown to a number of different organisations with interests in the Biosecurity sector and other industries in which the Opponent’s Product may have application in March and October 2021, April 2022 and August 2022;[12]

    ·     copies of contracts with customers, invoices and remittance advices; and

    ·     copies of proposals, correspondence and applications provided by the Opponent offering the supply, development, investment, and otherwise in connection with the Opponent’s Product under the Trade Mark.

    Discussion

    [11] Farrell, Confidential Annexure RF-6.

    [12] Ibid, Confidential Annexure RF-7.

    Use During the Relevant Period

15. I must first decide whether there has been use of the Trade Mark in good faith during the Relevant Period in relation to the Registered Goods. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered.

16. The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. This means use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and the person who applies the sign on or in relation to those goods.[13]  Use in the course of trade means an actual dealing in the goods, an offer for sale of goods, or an intention to offer goods for sale manifested through preparatory steps showing an objective commitment to use the trade mark.[14]

    [13] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

    [14] Angela Christou v Tonch Pty Ltd [2008] ATMO 24 (Hearing Officer N. Conway); see also Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 (Katzmann J).

17. The Applicant argues in its written submissions that the Opponent’s evidence does not establish use of the Trade Mark in the course of trade for the Registered Goods and at best, demonstrates use of the mark in connection with scientific and technological services and/or the hire of equipment relating to the provision of its services.  Further, the Applicant notes that Confidential Annexures RF-2, RF-6 and RF-7 are dated outside the Relevant Period and Confidential Annexure RF-9 is undated.  The Applicant acknowledges that Confidential Annexures RF-10 to RF-13 show the Opponent’s Product being used by customers but the Applicant claims that the Opponent’s Product has been hired by the customer and not purchased by them.

18. I agree with the Applicant that there are some issues with the Opponent’s evidence, with some of the evidence being undated or dated outside the Relevant Period.  A number of the Confidential Annexures show the Opponent’s Product being transported, stored and used during the Relevant Period but this is not evidence that the Registered Goods were sold or offered for sale.

19. With respect to the Applicant’s claim that the Opponent’s Product has been hired by the customer for the purpose of using the Opponent's biosecurity testing services, I do not regard this as a material consideration.  It has long been established that the leasing of a product is trade in that product as well as being a service.[15]  Moreover, I consider that the contract at Confidential Annexure RF-11 of Farrell is not a contract for hire of the Opponent’s Goods but rather one for a mixture of deliverables of goods and services including delivery of the Opponent’s Product.

    [15] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off (7th ed online, 2022) Lawbook Co., [5.3005].

20. I am satisfied that the Opponent has used the Trade Mark during the Relevant Period in relation to the Opponent’s Product.  I note the following comments of Justice Drummond’s in Woolly Bull Enterprises Pty Ltd v Reynolds:

    Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.[16]

    [16] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, 179 (emphasis added).

21. I also note that in Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd[17] a single sale of a prototype boat was sufficient to constitute a dealing in the goods.  In reaching this conclusion, Jacobs J commented:

    The nature of the sale or the purpose of the purchaser in making the purchase cannot gainsay the use of the mark in relation to the goods sold for the obvious purpose of indicating the necessary connexion.[18]

    [17] [1974] HCA 51 (Jacobs J).

    [18] Ibid, [16].

22. The Opponent has entered into contracts with third parties involving the Opponent’s Product which bears the Trade Mark.  The Opponent’s evidence shows that the Opponent has been working with Government departments to develop the Opponent’s Product to the point where it can be commercially deployed.  In particular, Confidential Annexure RF-11 of Farrell includes a Contract for the Supply of Goods and Services (‘Contract’).  Under this Contract, the Opponent supplied a prototype of the Opponent’s Product to the customer in mid-2020[19] and conducted biosecurity testing services to further develop the product.  An ‘optimised’ version of the Opponent’s Product was then delivered to the customer in mid-2021.[20]  Under the terms of the Contract, the Opponent received payment for supplying the Opponent’s Product bearing the Trade Mark.  The fact that the product started as a prototype and is being further developed through customer use does not negate the use of the Trade Mark in relation to the goods.  Additionally, other evidence supports that the Opponent’s activities have progressed beyond mere plans to use the Trade Mark and includes, for example, presentations seeking investment or co-operative partners for further development of the Opponent’s Product.[21]   

    [19] Farell, Confidential Annexure RF-13.

    [20] Farrell, Confidential Annexure RF-11.

    [21] See for example, Farrell Confidential Annexure RF-8.

23. I am satisfied that the Opponent’s evidence demonstrates that the Opponent has objectively committed to offering and supplying goods under the Trade Mark in the course of trade.  However, the Opponent’s use of the Trade Mark has been limited to goods with very specific applications, and it is appropriate for the registration to be restricted to the goods for which the mark has been used 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); Gas sensing devices; all the foregoing for use in detecting and analysing biosecurity threats, defence risks, contaminants and for exhaled breath analysis (‘Used Goods’)

    Obstacles to Use

24. The Opponent has not claimed that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the Relevant Period pursuant to
    s 100(3)(c). Nevertheless, 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 goods other than the Used Goods.

    Registrar’s Discretion

25. 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

26. 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

27. 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.

28. Both parties have requested an award of costs.  As both parties have had a degree of success, I decline to award costs.

    Tracey Berger

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    24 March 2025