Opposition by Hemmes Trading Pty Limited to application under section 92 of the - [2025] ATMO 142

TRADE MARKS ACT 1995

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

Re:Opposition by Hemmes Trading Pty Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Est Living Pty Ltd to partially remove trade mark number 1164556 (classes 16 and 32) - est - in the name of Hemmes Trading Pty Limited

Delegate:

Sheona Robertson

Representation:

Opponent: Gabriella Rubagotti of Counsel, instructed by Addisons Lawyers

Applicant: Self-represented

Decision:

2025 ATMO 142

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(b) – no use established – no obstacle to use – discretion not exercised – trade mark to be partially removed

Background

On 1 August 2022 Est Living Pty Ltd (‘Removal Applicant’) filed an application for partial removal (‘Removal Application’) of the following trade mark from the Australian Register of Trade Marks (‘Register’) for non-use pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’):

Trade mark:	est (‘Trade Mark’)
Registration number:	1164556 (‘Registration’)
Filing date:	6 March 2007
Goods:	Class 16: Paper, cardboard and goods made from those materials not included in other classes; printed matter, photographs, stationery Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages

The Removal Application sought removal in respect of the goods in class 16 only (‘Relevant Goods’).
Hemmes Trading Pty Limited (‘Removal Opponent’) filed a notice of intention to oppose the removal application, followed by a statement of grounds and particulars (‘SGP’). The Removal Applicant subsequently filed a notice of intention to defend the removal application.
The Removal Opponent filed as evidence in support a declaration made on 11 April 2023 by Sarah Duncan, General Manager Administration of MRVL Investments Pty Limited, the employment entity of the Merivale corporate group (‘Merivale’) to which the Removal Opponent belongs, and Exhibits SD-1 to SD-10 (‘Duncan 1’).
The Removal Applicant filed as evidence in answer a declaration made on 17 July 2023 by Miffy Coady, Managing Director of the Removal Applicant, and Annexures MC-1 to MC-8 (‘Coady’).
The Removal Opponent filed as evidence in reply a declaration made on 19 September 2023 by Sarah Duncan, and Exhibits SD-1 to SD-2 (‘Duncan 2’).
Once the time allowed for filing evidence ended, the parties were given an opportunity to request a hearing. Both parties requested an oral hearing. The Removal Opponent filed written submissions on 16 May 2025 (‘Removal Opponent’s Submissions’). The Removal Applicant filed written submissions on 23 May 2025 (‘Removal Applicant’s 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 30 May 2025. At the hearing Gabriella Rubagotti of Counsel, instructed by Addisons Lawyers, appeared for the Removal Opponent.…

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.

Continue reading Opposition by Hemmes Trading Pty Limited to application unde...

Details

AGLC: Opposition by Hemmes Trading Pty Limited to application under section 92 of the [2025] ATMO 142
Case: [2025] ATMO 142
Decision Date: 22 July 2025

CaseChat Overview and Summary

This matter concerned an application by Est Living Pty Ltd for the partial removal of trade mark number 1164556, registered in the name of Hemmes Trading Pty Limited, from the Australian Register of Trade Marks. The application sought removal under section 92(4)(b) of the Trade Marks Act 1995 (Cth) on the grounds of non-use in relation to goods in class 16 (paper, cardboard, printed matter, stationery) and class 32 (beers, non-alcoholic drinks, fruit juices). Hemmes Trading Pty Limited opposed the removal application. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether Hemmes Trading Pty Limited had established use of the trade mark "est" in good faith in Australia in relation to the goods in class 16 during the three-year period ending one month before the filing of the removal application. The Removal Applicant contended that no such use had been established, while the Removal Opponent argued that certain evidence demonstrated use, or that circumstances justified non-use. The delegate also considered the admissibility of additional evidence submitted by the Removal Opponent after the close of evidence.

The delegate reasoned that the Removal Opponent bore the burden of rebutting the allegation of non-use on the balance of probabilities. While the Removal Opponent submitted various pieces of evidence, including a wedding book, social media posts, event sheets, a wedding contract, and an invitation, the delegate found that these did not demonstrate use of the trade mark "est" in relation to goods in class 16. The delegate considered that references to "Est." in these materials primarily identified a venue or event space, and that the dominant branding was "Merivale." Furthermore, the delegate found that the use of the trade mark on menus, while potentially integral to restaurant services, did not constitute use in relation to printed matter as goods in class 16, distinguishing the situation from a prior case where a magazine was considered a tradeable good. The delegate concluded that the class 16 goods were produced solely for the Removal Opponent's benefit and were not provided "in the course of trade" in a manner that would establish use for the purposes of section 92(4)(b).

Consequently, the delegate determined that the Removal Opponent had failed to establish use of the trade mark in relation to the goods in class 16 during the relevant period. The delegate also found that the additional evidence submitted late by the Removal Opponent did not alter this outcome. Accordingly, the delegate ordered the partial removal of the trade mark from the Register in respect of the goods in class 16.

Orders