King International Pty Ltd v Eve's Sweets Pty Ltd

[2025] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by King International Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Eve’s Sweets Pty Ltd for partial removal of trade mark number 198010 (30) – POPPY – in the name of King International Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Ian Tannahill of Ahearn Fox Applicant: Cathryn Warburton of Longton Legal Pty Ltd
Decision:	2025 ATMO 67 Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(b) application for partial removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period for the relevant goods or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the goods for which they are registered

Background

1. This decision is pursuant to an application made on 22 May 2023 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Eve’s Sweets Pty Ltd (‘Applicant’) to for partial removal of the trade mark detailed below from the Register of Trade Marks. 

Registration No.	198010
Lodgement date	18 October 1965
Goods	Class 30: Sugar, rice, tapicca, sago, flour, confectionery, ices, yeast, baking powder, condiments, sauces, spices such as curry powder; culinary essences; custard powder, (‘Registered Goods’)
Owner	King International Pty Ltd
Trade Mark	POPPY (‘Trade Mark’)

1. The goods that are sought to be removed from the above specification are ‘Sugar, rice, tapicca, sago, flour, confectionery, ices, yeast, baking powder, condiments, sauces, spices such as curry powder; culinary essences’ (‘Removed Goods’).  If the application for removal is successful, the Trade Mark will remain registered for the goods for which the mark is registered other than the Removed Goods, namely custard powder.

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. King International Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 19 June 2023 and a Statement of Grounds and Particulars (‘SGP’) on 30 June 2023.  The Applicant filed a Notice of Intention to Defend on 10 August 2023.

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

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Ian Robert Tannahill, patent and trademark attorney with Ahern Fox Patent and Trademark Attorneys, the Opponent’s representatives (‘Tannahill declaration’)	17 November 2023	IRT-1 to IRT-31
Evidence in answer
N/A (None filed)
Evidence in reply
N/A (None filed)

1. 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 27 March 2024 the Applicant requested a hearing by video-conference.  The matter was set down for a hearing on 4 March 2025 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 23 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 18 February 2025 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 25 February 2025 (‘Applicant’s Submissions’).  At the hearing Ian Tannahill of Ahearn Fox represented the Opponent and Cathryn Warburton of Longton Legal Pty Ltd represented the Applicant.

2. 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, any oral submissions made by the parties and the evidence listed earlier in this decision:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Provisions

3. 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)  …

   (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.

4. 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 22 April 2023 (‘relevant period’).

5. 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.

6. 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)    …

   (b)  …
   (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.

7. 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, [26] (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).

8. 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.

9. 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).

10. The principles of 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.[9]

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

    Discussion

11. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[10]) 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] 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).

12. 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

13. The Opponent’s evidence in this matter consists of a declaration by its legal representative Ian Tannahill.  While I note that Mr Tannahill is unlikely to have direct knowledge of certain facts stated in the declaration, the Tannahill declaration attaches extensive material supporting the statements made and to the extent Mr Tannahill does not have direct knowledge, he identifies the two individuals employed by the Opponent who have provided him with the information that he deposes to.  While noting that it would have been preferable for the material in the declaration to have been provided by an informant with direct knowledge of the matter, I do not consider it appropriate to discount the declaration on the basis that it is not provided by a person with direct knowledge of the events, though I do not necessarily accept all the conclusions asserted by Mr Tannahill in his declaration.  

14. The Tannahill declaration states that the Opponent is a company that has continuously manufactured a variety of plant-based food products since 1987, including vanilla and custard powder (along with tofu, yoghurts, hummus, soy butter, soy and dairy free cheese and Worcestershire sauce).  It provides evidence in support of this through pages from its website that appear to have been taken on 1 May 2023 and earlier pages dated in March 2022 extracted using the Wayback Machine.  However, this material indicates that the products other than custard powder are offered under other brands and only indicates use of the Trade Mark on custard powder. 

15. The Tannahill declaration also gives evidence of the long-time use of the Trade Mark for custard powder and provides evidence of sales between 2017 and 2022 (though the evidence appears to indicate that sales ceased in December 2021).  The declaration also states that the Applicant has applied to register the trade mark ‘Poppy’s Chocolate’ for a variety of chocolate based products in class 30 and that the Trade Mark has been cited during examination of the Poppy’s Chocolate mark.  

16. The Tannahill declaration contains evidence that a competitor of the Opponent, Goodman Fielder Pte Ltd, manufactures both vanilla custard powder and fudge brownie mix which they offer under the same Trade Mark.  Finally, the declaration includes certain e-mails between the Opponent and third parties in 2022 and 2023 indicating a discussion about the Opponent selling chocolate flavoured custard and custard powder to those third parties.  However, there is no evidence that any chocolate flavoured custard powder was ever produced or that the discussion had proceeded to a definite intention by the Relevant Date; indeed the Applicant, in its submissions, drew my attention to evidence indicating that the third parties were not interested in those chocolate flavoured products proposed by the Opponent and discussions never proceeded following those rejections.

17. In summary I am not satisfied that the Opponent has used the Trade Mark for the Removed Goods during the relevant period or has ever used the Trade Mark for the Removed Goods.  All evidence of use of the Trade Mark has been for custard powder.  For completeness, as this may be relevant in considering obstacles to use, I note that custard powder is not confectionary and neither is chocolate-flavoured custard powder.  Rather it is a preliminary ingredient that, when mixed with other products, produces custard.  Confectionary consists of sweets that can be eaten immediately.

    Obstacles to use

18. The Opponent did not particularise any matters that amount to an obstacle to the use of the Trade Mark for the Removed Goods 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.  In the oral hearing the Opponent sought to argue that the refusal of the third parties to purchase chocolate flavoured custard or custard powder was an obstacle to use.  As this argument was not particularised in the SGP I cannot consider it and in any event it is irrelevant as the obstacle did not concern the Removed Goods, rather it impacted on the Opponent’s attempts to sell custard powder.  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 Removed Goods.

    Registrar’s Discretion

19. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off ,the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[11]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

    [11] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

    The following propositions are relevant to the exercise of this discretion:

    (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

    (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

    (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

    (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

    (5) The range of factors considered in the exercise of the discretion has included whether or not:

    (a) there has been abandonment of the mark;

    (b) the registered proprietor of the mark still has a residual reputation in the mark;

    (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

    (d) the applicant for removal had entered the market in knowledge of the registered mark;

    (e) the registered proprietors were aware of the applicant’s sales under the mark;

    (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[12]

    [12] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

20. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:

    [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[13]

    [13] [2010] HCA 13, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[14] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[15] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[16]

   [14] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

   [15] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [16] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (emphasis in original).

2. In the present case, the Opponent submitted that I should exercise the discretion not to remove the Trade Mark in respect of the Removed Goods on the basis of s 101(4) of the Act, namely that the Trade Mark has been used in respect of similar goods, being custard powder. The Opponent submits that custard powder is a similar good to the Removed Goods and submits that as a result of this similarity, by reason of the removal of the Trade Mark in respect of the Removed Goods, confusion will occur among the public. The Applicant submits that custard powder is not a similar good to confectionary and there is little or no evidence of use of the Trade Mark on custard powder or reputation.

3. In the present case, I do accept that there are similarities between custard powder and some of the Removed Goods, however this is not by itself determinative of whether or not I should exercise the discretion. Section 101(4) of the Act only identifies the use of the Trade Mark on similar goods as a factor that I may take into account in the exercise of the discretion.

4. The Opponent has only used the Trade Mark for custard powder and has evidenced no intention to use the Trade Mark for the Removed Goods, nor does the Trade Mark have any reputation in the Removed Goods.  There is a public interest in the integrity of the Register, and I do not consider the public interest in this case is served by allowing a mark to remain registered for a wider variety of goods then used or intended to be used by the Opponent.  If I were to remove the Removed Goods the Opponent would still retain the protection of the Trade Mark for custard powder and (both in respect of any opposition or infringement matters) any similar goods or closely related services.  As such I do not consider that the private commercial interest of the Opponent would be significantly impacted by the removal of the Trade Mark for the Removed Goods.  Nor would there be a significant risk of consumer confusion; the scope of the protection granted to the Opponent under the revised specification would (absent any defences) prevent the use of deceptively similar marks for custard powder and any similar goods or closely related services; it is not necessary for the protection of the public to retain the registration of the Trade Mark for a wider range of goods then it has actually been used for.

5. By contrast the Applicant seeks to register as a trade mark Poppy’s Chocolate.  There is obviously a significant commercial interest of the Applicant in having its application or applications assessed (both in the examination process and in respect of any opposition the Opponent may wish to pursue) against the Trade Mark as registered for a narrower range of goods, one that reflects the manner in which the Trade Mark has actually been used in Australia.   Given the matters considered above I consider that this is not an appropriate case to exercise the Registrar’s discretion to allow the mark to remain registered in respect of goods for which it has not been used in the relevant period.

   Decision

6. The Opponent has not established its opposition to partial removal. Accordingly, I direct that registration 198010 be amended one month from the date of this decision as set out below to remove the Removed Goods. The marks will remain registered for the goods listed below. If the Registrar is served with a notice of appeal before then I direct that partial 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.

   Class 30:  custard powder

   Costs

7. The Applicant has been successful in relation to the application for partial 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. I note that the Applicant has sought an order of costs for an amount greater than prescribed by Schedule 8 but it has neither identified, nor for completeness am I aware of, a provision in the Act or Regulations that provides me with a power to make such an order.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   8 April 2025