Lendlease Corporation Limited v Civil & Civic Group Pty Ltd
[2025] ATMO 153
•1 August 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Lendlease Corporation Limited to an application under section 92 of the Trade Marks Act 1995 (Cth) by Civil & Civic Group Pty Ltd for the removal of trade mark number 650511 (Classes 36 and 37) – CIVIL & CIVIC – in the name of Lendlease Corporation Limited.
Delegate: Bianca Irgang Representation: Opponent: Rob Clark of counsel instructed by Herbert Smith Freehills
Applicant: Susan Gatford of counsel instructed by Mills Oakley
Decision: 2025 ATMO 153
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4) (b) application for removal - Opponent’s evidence does not show use of the Trade Mark during the relevant period – due to residual reputation exercise of Registrar’s discretion appropriate – Trade Mark to remain on the Register.Background
This decision is pursuant to an application made on 15 September 2023 under ss 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Civil & Civic Group Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all the services which the trade mark is registered in classes 36 and 37.
Registration No. 650511 Lodgement date 16 January 1995 Services Class 36: Management services including property management and realty administration and leasing services relating to shopping centres and retail stores; lease purchase financing, financial management and brokerage; financing services; insurance brokerage and insurance underwriting services
Class 37: Construction and construction engineering services; maintenace and repair services; maintenance and repair engineering services; rental of construction equipment (‘Opponent’s Services’)
Owner Lendlease Corporation Limited Trade Mark CIVIL & CIVIC
(‘Trade Mark’)
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.
Lendlease Corporation Limited (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 28 November 2023 along with the Statement of Grounds and Particulars (‘SGP’) on 20 December 2023. The Applicant filed a Notice of Intention to Defend on 31 January 2024.
The evidence filed in this matter is the following:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Dale Connor, Chief Executive Officer of the Lendlease Group for Australia (‘Connor’)
2 May 24
DC-01 to DC-22
Evidence in Answer
Lisa Maree Egan, Partner at Mills Oakley the legal representatives for the Applicant
2 August 2024
LME-1 to LME-3
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. Both parties requested an oral hearing. The matter was set down for a hearing on 9 May 2025. The Opponent filed its written submissions on 1 May 2025 (‘Opponent’s Submissions’). The Applicant filed written submissions on 8 May 2025 (‘Applicant’s Submissions’).
I am a delegate of the Registrar of Trade Marks (‘Registrar’) and I heard the matter on 9 May 2025 via videoconference. At the hearing, Susan Gatford of counsel instructed by Mills Oakley appeared for the Applicant. Rob Clark of counsel instructed by Herbert Smith Freehills appeared for the Opponent. I will now decide the matter on the basis of the following relevant material and the evidence listed earlier in this decision:
·The Application for Removal;
·the Notice of Intention to Oppose and SGP; and
·the Applicant and Opponent’s oral and written submissions.
The Relevant Provisions
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) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i)to use the trade mark in Australia; or
(ii)to authorise the use of the trade mark in Australia; or
(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services);
in relation to the goods and/or services to which the non-use application relates and that the registered owner:
(iv)has not used the trade mark in Australia; or
(v)has not used the trade mark in good faith in Australia; in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
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 15 August 2023 (‘Relevant Period’).
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,[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 (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.
The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.[…]
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
(b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:(i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.
I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]
[2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.
In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services 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.
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),[3] 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’.[4] 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.[5]
[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).
[5] Act s 7(3).
The principles regarding when a trade mark has been used as a badge of origin were summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Selfcare’), in which the High Court noted the following:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]
Discussion
[6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
To successfully oppose the application for removal the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) 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)).
[7] 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).
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
Ms Gatford, legal counsel for the Applicant, argued that none of the Opponent’s evidence demonstrates any use of the Trade Mark during the Relevant Period. The Applicant asserts that the Opponent assisted in various ways in the design/construction/alteration of various buildings between 1951 and 1999 and that there has been no use since 1999. The Applicant also asserts that the Opponent has demonstrated no use of the Trade Mark in connection with the Opponent’s Services for the last 25 years and has abandoned the Trade Mark.
Connor sets out that the Trade Mark has been in use since 1951[8], when it was adopted by Dick Dusseldorp AO as the company name and brand for his construction business. Subsequently, Mr Dusseldorp founded Lendlease (the Opponent), and the CIVIL & CIVIC branded business was acquired by the Opponent. Exhibit DC-04 contains a copy of a WayBackMachine print out of the Opponent’s website dated during the Relevant Period which confirms the historic timeline and mentions the Trade Mark.
[8] Exhibits DC-02 and DC-04 accompanying Connor.
According to Connor, over the next 50 years the Trade Mark was used by the Opponent to provide construction services around Australia[9] and “went on to become Australia’s leading provider of project management services in the construction industry, delivering a number of landmark projects”. At the time of Mr Dusseldorp’s retirement in 1988, the Opponent which included the CIVIL & CIVIC business) had 6,000 employees[10]. Connor asserts that the first construction project completed under the Trade Mark was the building of 200 houses for workers for the Snowy Mountains Hydro-Electric Scheme. The notable and culturally significant buildings and landmarks that the Opponent constructed after then have included:
·Podium of the Sydney Opera House;[11]
·Australia Square on George Street in Sydney;[12]
·National Tennis Centre in Melbourne;[13]
·Riverside Centre in Brisbane;[14]
·MLC Centre in Sydney;[15]
·Canberra Centre in Canberra;[16] and
·Brisbane Airport’s International terminal.[17]
[9] Exhibit DC-17 accompanying Connor.
[10] Exhibit DC-17 accompanying Connor.
[11] Exhibits DC-07 to DC-09 accompanying Connor.
[12] Exhibit DC-17 accompanying Connor.
[13] Exhibit DC-06 accompanying Connor.
[14] Exhibit DC-14 accompanying Connor.
[15] Exhibits DC-06 and DC-17 accompanying Connor.
[16] Exhibits DC-05 and DC-06 accompanying Connor.
[17] Exhibit DC-17 accompanying Connor.
Exhibit DC-17 accompanying Connor includes a publication from the Australian Institute of Architects which identifies the most notable buildings in Australia. Of the nine projects identified as being internationally significant public architecture, three are identified as being constructed under the Trade Mark. Additionally, of the 100 tallest buildings identified in the publications, 17 were build using construction services that were offered under the Trade Mark. The Opponent has established that there were many construction projects completed by the Opponent under the Trade Mark from 1951 until 1999.[18] Exhibits DC-11 and DC-13 accompanying Connor contain photographs which demonstrate the Trade Mark being prominently displayed at the historic construction sites. Additionally, some of the buildings or landmarks that were constructed under the Trade Mark prominently display plaques that reference the Trade Mark.[19] However, I note that some of the plaques and third party websites contain reference to Civil & Civic Pty Ltd rather than the Trade Mark[20].
[18] Exhibit DC-05 accompanying Connor.
[19] Exhibit DC-03 accompanying Connor.
[20] Exhibits DC-04 and DC-10 accompanying Connor.
The Applicant has argued that all the buildings constructed by the Opponent are the ‘result’ of the Opponent’s Services and are not active and current offerings of the Opponent’s Services. I agree with the Applicant. Many of the Opponent’s exhibits are not persuasive and do not prove use of the Trade Mark through the relevant period.
I turn to the High Court decision in E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd[21] where the Court discussed and followed the decision in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd[22] whereby, when considering use of a trade mark, goods bearing the trade mark no longer remain “in the course of trade” once they are acquired for consumption. In their joint judgement at [46] four of the five judges stated:
In considering what “use” meant under s 23 of the Trade Marks Act 1995 (Cth) a provision similar to, but not identical with, s 92(4)(b) Windeyer J said [24]:
“When it is said that a trade mark is used to distinguish the goods of one man from those of another, that abbreviated statement obviously does not refer to the goods of the owner of the mark in the sense of goods which he owns or possesses. After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connection in the course of trade between them and him, he registered proprietor of the mark. The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.”
[21] (2010) 241 CLR 144; 84 ALJR 352; [2010] HCA 15.
[22] (1967) 116 CLR 254, 266-267.
While this case dealt with goods, the same principal can be applied to the Opponent’s services. I acknowledge that the Opponent’s Services are an unusual category of services because the end result of these services is a structure which can be utilised for decades or longer. It is clear that the Opponent still offers construction services but under a different trade mark. It has not offered the Opponent’s Services under the Trade Mark since 1999. Whilst references have been made to the Trade Mark, these references are in regards to historic uses of the Trade Mark on the Opponent’s Services prior to 1999. While the structures/buildings that were constructed by the Opponent under the Trade Mark remain in use in the Australian marketplace the Opponent’s Services have not been offered under the Trade Mark for 25 years. I acknowledge that the Opponent did make a post through its LinkedIn profile[23] during the Relevant Period which referenced the Trade Mark and was met with active involvement from Australian consumers reminiscing about the Opponent’s Services offered under the Trade Mark. However, these references to the Trade Mark were in regards to historic use rather than use of the Trade Mark on the Opponent’s Services during the Relevant Period. The same can be said of the screen shots of the third party blog by Built Form Design Academy contained in exhibit DC-11. This blog contains historic references and photographs of the Opponent’s previous constructions prominently bearing the Trade Mark.
[23] Exhibit DC-04 accompanying Connor.
Despite these recent references to the Trade Mark by the Opponent and third parties[24], I cannot be satisfied, on the balance of probabilities, that these references and the buildings that resulted from the Opponent’s Services are somehow use of the Trade Mark on the Opponent’s Services in the course of trade during the Relevant Period. Nor am I satisfied that references made to the Trade Mark on building plaques or in publications/press releases on webpages demonstrate current use of the Trade Mark rather than promoting historical events which took place over 20 years ago. However, I now turn to the Registrar’s discretion.
Registrar’s Discretion
[24] Exhibits DC-12, DC-13 and DC-17 accompanying Connor.
To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Opponent’s Services.[25] The burden of persuasion in this regard falls on the Opponent.[26]
[25] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
[26] Ibid.
In coming to a decision I refer to CUB Pty Ltd (formerly Fosters Australia Ltd) v Elixir Signature Pty Ltd[27], and the factors to be considered when making a decision whether or not to exercise the Registrar’s discretion were:
(a) There had been no abandonment of the trade mark;
(b) The registered proprietors of the mark still had a residual reputation in the mark;
(c) There had been sales by the registered proprietors for goods for which removal was sought since the relevant period ended;
(d) The applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and
(e) The registered proprietors were not aware of the applicant’s sales under the mark.
[27] [2013] ATMO 74 (Hearing Officer Windsor) (‘CUB’).
The Opponent has argued:
Both public and private interest factors support such an exercise of discretion, including because:
(a) Lendlease has not abandoned, and has continued to use, the CIVIL & CIVIC trade mark, including during the Relevant Period.
(b) Lendlease retains a substantial reputation in the CIVIL & CIVIC trade mark in connection with the services claimed in the Registration owing to its widespread and longstanding use of the mark since 1951.
(c) There is a real risk of consumer confusion occurring if the Registration is removed from the Register. This is because consumers, if encountering use of CIVIL & CIVIC by a third-party, would be likely to assume that such use is connected with Lendlease as a result of its reputation in the trade mark.
(d) There is no risk of public confusion should the Registration be allowed to remain on the Register.
The Applicant has argued that there is no use during the relevant period, no documented intention as to future use and no suggestion that the Opponent ever wishes to use the Trade Mark again. The Applicant asserts that the Opponent appears to have maintained and wishes to continue to maintain the registration so as to indefinitely prevent others from using the Trade Mark. The Applicant states that in a system where present day use and, to some extent, future use is a touchstone of the right being sought to be preserved, the Opponent’s lack of use or intention to use in the future mitigates strongly against the exercise of the discretion to retain the Trade Mark on the Register. I am not persuaded by this reasoning.
In Rael Marcus v Sabra International Pty Ltd[28], Burchett J said:
The question of abandonment requires separate consideration. It is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use. The connection in the course of trade denoted by it will not immediately be forgotten. That connection may be valuable, and it remains open to the proprietor to resume the use of the mark. Unless he has actually abandoned the mark, its use by another may amount to an appropriation of the benefit of the good name acquired by the mark over an earlier period of years
[28] [1995] FCA 1059; (1995) 30 IPR 261.
The Opponent referred me to CUB where the Hearing Officer outlined the relevant principles relating to exercise of the discretion and stated (at paragraph [115]):
It does appear fairly consistently from the cases that in order for a trade mark not to be taken as abandoned, there must be at least some residual reputation; some documented intention for future use or at least some slight use during the period in which the trade mark appears to have been in “hiatus”.
In CUB, the Hearing Officer accepted evidence submitted by the removal opponent that its trade marks have retained strong residual reputations through continued visibility in Australian pubs and venues, and social media, with each mark belonging to a legacy brand, which were in the market for generations. The Opponent contents that the same is true of the Trade Mark.
The Opponent states that the Trade Mark is an iconic legacy brand of the Opponent, being the brand under which Australia’s most culturally significant buildings and landmarks were constructed, including the Podium of the Sydney Opera House, Australia Square, the National Tennis Centre, Riverside Centre, MLC Centre, Canberra Centre and the Reserve Bank of Australia in Canberra. They argue that the reputation in the Trade Mark has been cemented through 70 years of widespread use and promotion of the Trade Mark throughout Australia in connection with the Opponent’s Services, through articles and on the Opponent’s website[29].
[29] Exhibits DC-04, DC-12, DC-13 and DC-17 accompanying Connor.
I do not agree that the Opponent has used and actively promoted the Trade Mark through the last 70 years on the Opponent’s Services. I do agree that the Opponent did use the Trade Mark throughout a period of roughly 50 years from 1951 until 1999. I also agree that there are famous buildings, plaques and the numerous publications and websites which do reference the Trade Mark and its historical significance to the Opponent that were active and available to the Australian public during the Relevant Period.
The Applicant has sought to persuade me that there is no residual reputation in the Trade Mark. The Applicant argues that the Opponent needs to establish a strong present-day recognition by the public generally of the Trade Mark as a trade mark for the Opponent’s Services such that if services were offered under the Trade Mark today they would be thought to emanate from or be connected with the Opponent
I agree to a certain degree. But in this case I would not expect the majority of Australian consumers who have no involvement with the construction industry or much interest in famous buildings in Australia to be aware of the Trade Mark. However, I do not believe that a residual reputation in the Trade Mark can only be established if the Australian general public knows of the Trade Mark.
I am satisfied that the Opponent’s 50 years of use of the Trade Mark and continued operation within the construction industry has established a significant and enduring reputation in the Trade Mark for those consumers who are familiar with or involved in the construction industry. This is demonstrated through the numerous publications which reference the history of the Opponent and its Trade Mark along with the engagement of the public with the Opponent’s LinkedIn article[30].
[30] Exhibit DC-04, DC-9 to DC-14 and DC-17 to DC-20 accompanying Connor.
I would also expect and anticipate that any consumer looking for construction services would generally educate themselves and conduct research into any trader they were considering engaging for constructions services. It is also likely that references to the Trade Mark would reveal its 50 year history of use in the construction industry by the Opponent.
The Opponent has argued that the Applicant has adopted a substantially identical trade mark to the Trade Mark for its construction services in an attempt to misappropriate the long-standing reputation in the Trade Mark. The Applicant’s Submissions state that the Opponent appears to have maintained and wishes to continue to maintain the registration so as to indefinitely prevent others from using the Trade Mark. I agree that where there is demonstrated residual reputation in a valuable legacy trade mark that a party is likely to want to continue to protect that mark, as it should. It is not for other traders in the marketplace to seek to appropriate residual reputation in historical trade marks for their own business interests when the original owners still retain active ownership of the marks. The Regsitrar’s discretion exists to protect the interests of legacy trade marks in these rare cases.
Given all the surrounding information, I am satisfied that there are sufficient reasons before me to exercise the Registrar’s discretion to maintain the Trade Mark on the Register.
Decision
I am satisfied that it is appropriate to exercise the Registrar’s discretion to maintain the Trade Mark on the Register for all the Opponent’s Services in classes 36 and 37. Accordingly, the application for removal is unsuccessful.
Costs
The parties have requested costs. However, as both parties have been successful to some extent I determine that each party should bear its own costs.
Bianca Irgang
Hearing Officer
Delegate of the Registrar of Trade Marks
1 August 2025
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