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

1. 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

1. The Removal Application sought removal in respect of the goods in class 16 only (‘Relevant Goods’).

2. 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.

3. 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’).

4. 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’).

5. 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’).

6. 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’).

7. 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. The Removal Applicant was self-represented at the hearing.

8. I have decided this matter as required by s 101 of the Act. In doing so I take account of the evidence as well as the Removal Opponent’s Submissions, the Removal Applicant’s Submissions and the parties’ oral submissions made at the hearing.

Preliminary Issue

1. The Removal Opponent’s Submissions contain an annexure, being a printout from the Merivale website dated 6 May 2025, regarding an ‘exciting transformation’ happening with the Removal Opponent’s ‘est’ fine-dining venue (‘Restaurant’). On 30 May 2025 the Removal Opponent’s representatives sent an email to myself and the Removal Applicant attaching two images of the Removal Opponent’s restaurant signage and one image of the Removal Opponent’s menu. Together, these materials are referred to in this decision as the ‘Additional Evidence’. The Additional Evidence was submitted after the period for filing evidence had ended.

2. Regulation 21.19 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) affords the Registrar discretion to consider whether available information is relevant and should be considered in making a decision in the proceedings. However, reg 21.19 is not a substitute for the evidence stages of an opposition, and compelling reasons are required for inclusion of any new material that was not properly filed during the evidence stages.

3. On invitation to provide oral submissions in relation to this issue, the Removal Opponent submitted that the Additional Evidence does not involve any relevant prejudice to the Removal Applicant. The Removal Opponent explained the late provision of the Additional Evidence because the decision to reopen the Restaurant was recently made and the documentary evidence was accordingly not available when the substantive evidence was filed. It was submitted that the Additional Evidence says no more than the evidence which was filed on time, but is important to demonstrate the Removal Opponent’s ongoing use of the Trade Mark.

4. The Removal Applicant submitted that it would be unfair and prejudicial for the Additional Evidence to be allowed. The Removal Applicant notes that the Additional Evidence was filed too late in the proceedings and relates to use outside of the three-year period ending on 1 July 2022 (‘Relevant Period’).

5. For the reasons which follow, the Additional Evidence does not change the outcome of this matter and it is not necessary to consider this issue any further.

Removal Opponent

1. The Removal Opponent is the trading entity of Merivale. Initially founded as a fashion house around sixty years ago, Merivale first expanded into the entertainment and hospitality industry in 1970. Today Merivale owns and operates over seventy restaurants, bars, pubs, hotels, and venues in Australia. Duncan 1 contains extracts from the Merivale website which provide information about the Merivale services.

2. The Removal Opponent is the owner of numerous trade marks in Australia, including the Registration and Australian trade mark registration number 1140886 in classes 35, 41, 42 and 43, also in respect of the Trade Mark.

3. The Trade Mark was used as the name of the Restaurant in Sydney between 2000 and 2019. Duncan 1 contains printouts of online articles dated between 20 August 2009 and 22 August 2019 showing the Restaurant was the recipient of several accolades, including awards from the Good Food Guide, Australian Gourmet Traveller, the Australian Hospitality Association, the Australian Financial Review and TripAdvisor.

4. The Restaurant initially closed for renovations on 21 December 2019, but according to the Removal Opponent it was unable to recommence operating as a fine-dining venue due to the impact of the COVID-19 pandemic and its associated lockdown restrictions. However, the Restaurant continued to cater for private events, in particular weddings. Annexure MC-5 to Coady contains four archived extracts from the ‘est’ page of the Merivale website which confirm the closure of the Restaurant with the statement, ‘Although it will be dearly missed, we’re excited by the new venues we have coming’.

5. It is declared in Duncan 1 that the Removal Opponent intends to re-launch the Restaurant on George Street in Sydney, which is stated to require an investment of significant funds[1] and renovation work.

   [1] Duncan 1, [16].

Removal Applicant

1. The Removal Applicant is a digital publisher and global design resource in the fields of architecture and interior design, and related products. The Removal Applicant has published a quarterly digital magazine under then name ‘Est’ since 2011. Annexures MC-6 and MC-7 to Coady contain extracts from the Removal Applicant’s website, including galleries of magazine issue covers, a description of the Removal Applicant’s services and the biographies of senior members of staff.

2. It is stated that the Removal Applicant has ‘cultivated a substantial and engaged audience across multiple platforms, currently reaching in excess of 1,600,000 individuals per month’.[2] The primary media platforms are the Removal Applicant’s website and the ‘Est’ digital magazine. The website has an annual audience of around 972,000 active users, showcasing thousands of design spaces and products and profiling almost 400 architects and interior designers. The broader digital presence of the Removal Applicant includes social media accounts on Instagram, Facebook, Pinterest, TikTok, LinkedIn and YouTube. The Removal Applicant also has thousands of podcast streams and downloads on Spotify, and it distributes a weekly email newsletter to approximately 40,000 subscribers.

   [2] Removal Applicant’s Submissions, [8.10].

3. The Removal Applicant applied to register the following trade marks on 24 March 2021:

Trade mark	Application number	Goods/Services
EST	2163257	Class 9: Databases (electronic publications); Electronic and recorded multimedia publications; Electronic publications (downloadable); Electronic publications including those sold and distributed online; Magazines downloaded via the internet Class 35: Advertising; Advertising services provided over the internet; Arranging exhibitions for advertising purposes; Dissemination of advertising material; Electronic advertising services; Production of visual advertising matter; Promotion (advertising) of business; Promotional advertising services; Provision of advertising space; development of advertising concepts; Arranging and conducting promotional and marketing events; Business promotion services; Compilation and provision of online directories; Compilation of business directories; Compilation of direct mailing lists; Compilation of directories for publishing on the Internet; Design of marketing material; Design of publicity material; Marketing; Preparation of advertisements; Preparation of publicity material; Product marketing; Promotional marketing; Promotional services; Providing business information via a website Class 41: Electronic publication of information on a wide range of topics, including online and over a global computer network; Magazine publishing; Online (electronic) publication of news; Online publication of electronic books and journals; Providing information in the field of entertainment; Providing online electronic publications, not downloadable; Publication of magazines; Publication of multimedia material online; Publication of news; Publishing by electronic means; Publishing of newsletters
EST LIVING	2163255
2163256

Discussion

1. Section 92 of the Act relevantly provides:

(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.

1. Section 100 of the Act relevantly provides:

2. 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.

3. The Trade Mark was filed prior to 24 February 2019. Accordingly, an application for removal under s 92(4)(b) may only be made after a period of five years has passed from the filing date of the application.[3] I confirm that the filing date of the Trade Mark is more than five years prior to the filing date of the Removal Application.

   [3] See Act s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) ss 45-46.

4. The Removal Opponent bears the burden of rebutting the non-use allegation.[4] The standard of proof required is the ordinary civil standard, being on the balance of probabilities.[5]

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

   [5] 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.

5. For the purposes of s 92(4)(b) of the Act, the period in which the Removal Opponent must establish use of the Trade Mark in good faith is the Relevant Period.

Use of the Trade Mark during the Relevant Period

1. The ‘use’ required to be demonstrated by the Removal Opponent is ‘use as a trade mark’, that is, use of the sign as a badge of origin to indicate a connection in the course of trade between the goods and the person applying the sign to, or in relation to, the goods.[6]  Use ‘in the course of trade’ means either an actual dealing in the goods, an offer for sale of the goods, or an intention to offer the goods for sale evidenced by preparatory steps demonstrating an objective commitment to use the trade mark.[7]

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

   [7] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 415, 433-434 (Deane J); Winton Shire Council v Lomas (2002) FCA 288, [36] (Spender J); Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [40] (Drummond J) (‘Woolly Bull’).

2. Use of a trade mark ‘in good faith’ is to be understood as use that is ‘real, as opposed to token, use in a commercial sense’.[8] Provided the use is in good faith, 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) of the Act,[9]  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’.[10]

   [8] Woolly Bull (n 7), [16].

   [9] Woolly Bull (n 7), [17].

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

3. In the SGP it is stated that there has been use of the Trade Mark in good faith during the Relevant Period in respect of some or all of the Relevant Goods. The Removal Opponent acknowledges that the evidence includes instances of use of the Trade Mark outside the Relevant Period, but notes that only a single bona fide use within the Relevant Period is sufficient.

4. The Removal Opponent submits that use of the trade marks ‘est.’, ‘Est.’ or ‘EST.’ constitutes use of a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark. I accept this submission. On a side by side comparison, the respective representations are effectively the same as the Trade Mark. The essential feature of each representation is the letters ‘est’ and the absence of a full stop and exclusive use of lower case letters do not substantially affect the identity of the Trade Mark.

5. The evidence provided to rebut the allegation of non-use is contained in Duncan 1 and Duncan 2. Exhibit SD-5 to Duncan 1 contains a sample of pages from the Removal Opponent’s ‘Weddings by Merivale’ hard copy book, which was produced in 2017. The first page is headed ‘Welcome to Weddings By Merivale’ followed by a list of Merivale wedding venues including ‘EST.’. The ‘EST.’ page of the book describes the style of the venue and provides the guest capacity and address for the Restaurant. The Removal Opponent submits that the book is a paper product which bears the Trade Mark, and is provided ‘in the course of trade’ because it is an advertising material which furthers the business operations of the Removal Opponent. It is clear that ‘Merivale’ is the dominant brand in use on the book. However, I do not consider the presence of the word ‘EST.’ in the book comprises use of the Trade Mark in relation to the Relevant Goods. It is not use as a sign to indicate the origin of any of the Relevant Goods, or to indicate a connection in the course of trade between the Relevant Goods and the Removal Opponent. I note also that the book was produced in 2017, but it is not declared that the book was provided to the Removal Opponent’s customers during the Relevant Period.

6. Exhibit SD-6 to Duncan 1 contains a printout of the ‘Merivale Weddings’ Facebook page. The profile picture for the Facebook page is the Merivale ‘M’ logo. The printout includes posts dated 7 September 2022 and 6 and 19 December 2022 which identify ‘Est. Restaurant’ as the venue at which three weddings were held. Exhibit SD-7 to Duncan 1 is a printout of the ‘Merivale Weddings’ Instagram account which likewise identifies ‘est.’ as one of the Merivale wedding venues. Exhibit SD-1 to Duncan 2 contains event sheets for events held by the Removal Opponent on 7 April 2023 and 4 May 2023 (both of which are outside of the Relevant Period). The event sheets include the ‘merivale’ logo in the top left corner and are titled ‘Event Sheet – est. – Establishment Level 1’. The ‘Dinner Service’ section of the event sheets identifies the menus to be provided at each event as ‘Peter Doyle’s Est Menu’.

7. In my view, these exhibits do no more than establish that the Restaurant was occasionally used as a wedding venue or event space by Merivale. References to ‘Est.’ in these exhibits are limited to identification as a location or event space. The exhibits do not contain images of printed matter or similar goods bearing the Trade Mark. Similar to Exhibit SD-5 to Duncan 1, Merivale is the dominant branding on the Facebook and Instagram pages and the event sheets. For these reasons, these exhibits do not demonstrate use of the Trade Mark in respect of the Relevant Goods.

8. Exhibit SD-8 to Duncan 1 is a copy of a contract dated 11 February 2022 for a wedding at ‘Est. Restaurant’, with venue inclusions of place cards and personalised menus. The contract is titled ‘Merivale Wedding Contract’. On each page of the contract, the stylised word ‘merivale’ appears as the header and the Merivale ‘M’ logo is featured at the footer. The contract suffers multiple deficiencies as evidence of use of the Trade Mark. Firstly, the trade marks used on the contract are the ‘Merivale’ and the ‘M’ logos and the Restaurant is merely listed as the location of the event. The contract itself does not evidence use of the Trade Mark as a trade mark.

9. Secondly, the Removal Opponent contends that the Trade Mark was used in respect of the place cards and personalised menus but no samples of the place cards or personalised menus have been provided. The contract refers only to the placement (rather than the provision) of the place cards. I note also that the term ‘personalised menus’ may simply refer to food and beverages being tailored to the dietary requirements of each wedding guest, and not to the printed menus themselves. Further, the Removal Applicant’s contention that both the place cards and menus were likely provided by a third party supplier finds support in Annexure MC-1 to Coady, which contains a printout of a post, dated 7 December 2022, from the ‘Merivale Weddings’ Facebook page in relation to the wedding the subject of the contract in Exhibit SD-8. The post includes a credits list of suppliers used for the wedding, including a stationery provider. Overall, it is unclear whether the place cards and personalised menus referred to in Exhibit SD-8 were provided by the Removal Opponent, or whether they bore the Trade Mark.

1. Exhibit SD-9 to Duncan 1 is a copy of an invitation which was reportedly sent to guests in May 2022 for a wedding to be held on 17 September 2022. The location of the event is listed as ‘est. Restaurant’. It is declared in Coady that there is no indication that the invitations were supplied by the Removal Opponent; accordingly, there is no use of ‘est’ as a trade mark on the invitation. I accept this submission.

2. Exhibit SD-10 to Duncan 1 is a series of screen captures of social media posts by patrons of the Restaurant which show use of the Trade Mark on printed menus. I note that only one of these posts is dated during the Relevant Period and that the post dated within the Relevant Period (20 October 2020) features a caption with the words ‘est. (CLOSED)’. The Removal Opponent submits that Exhibit SD-10 shows bona fide use of the Trade Mark in respect of goods in class 16, and that it is reasonable to extrapolate from Exhibit SD-10 that menus prominently featuring the Trade Mark were supplied to all customers as part of the trade of the Restaurant.

3. Exhibit SD-2 to Duncan 2 is a copy of a printed menu given to guests at an event held on 7 April 2023, being outside of the Relevant Period. The word ‘est.’ appears prominently at the top of the menu. The Removal Opponent submits that, together with the other evidence, this demonstrates a course of conduct by the Removal Opponent in the provision of menus for special events.

4. The provision of menus is, according to the Removal Opponent, ‘necessary and integral to the commercial operations of its restaurant, leading to the actual sale of food and drink’.[11] The Removal Opponent submits that as menus are carefully designed, used as guides to an event, and are likely to be kept as keepsakes, they contribute to the customer’s dining experience and cost base and thereby promote the business operations of the Removal Opponent. The Removal Opponent contends that notwithstanding there is no separate charge for the provision of menus, they are adjunct to the services provided by the Removal Opponent and are provided in the course of trade.

   [11] Removal Opponent’s Submissions, [25(c)].

5. In this regard, the Removal Opponent submits that a trade mark can be ‘used’ on goods not subject to sale even where ‘the goods are only supplied to further the provision of a service’,[12] citing Re Application by Estate Agents Co-Operative Ltd (‘Realtor’). The Delegate in that decision was satisfied that the free distribution of a real estate magazine was use of the ‘realtor’ trade mark in class 16:

   … a business which operates to provide a service can in the process of providing that service also generate a trade in goods notwithstanding the fact that there may be no direct charge for those goods, and that the goods are no more than what may be thought of as an adjunct to the service. Estate Agents are clearly in the business of real estate. In the course of that business, however, they produce a magazine which serves as an advertising vehicle for the members of their group. The magazines are goods. Having regard to the above cases, the fact that these goods are offered to the public to promote the applicant's business operations satisfies me that they are dealt with in the course of trade…[13]

   [12] Removal Opponent’s Submissions, [16].

   [13] (1990) 20 IPR 547, 551 (Delegate Hardie).

6. I consider the present matter to be distinguishable from Realtor. In Realtor, the goods in question were only supplied to paying subscribers, who then made the magazines freely available to the public. The magazine was therefore sold in the marketplace. I accept the submission of the Removal Applicant that Realtor does not suggest that the use of a trade mark on goods not subject to sale can constitute use.

7. The Removal Applicant submits that use of ‘est’ on a menu does not comprise use of the Trade Mark. I agree with the contention of the Removal Applicant that menus are ancillary to the services provided by the Removal Opponent, namely restaurant and catering services. Like many other promotional materials,[14] menus are printed material which are distributed for free and serve the dual function of advertising, and informing guests about, the food and beverages on offer. In my view, use of the Trade Mark on menus is use in relation to the Removal Opponent’s services, rather than use in relation to the printed matter bearing the Trade Mark. Accordingly, I do not consider use of the Trade Mark on menus to constitute evidence of use in respect of goods in class 16.

   [14] M Davison, I Horak, Shanahan’s Australian Law of Trade Marks & Passing Off (7th ed online, 2022, Thomson Reuters) [5.3025].

8. Annexure MC-4 to Coady contains extracts of internet searches for the terms ‘est paper’, ‘est cardboard’, ‘est photographs’, ‘est stationery’, ‘est invitation’, ‘hemmes est invitation’, ‘est menu’ and ‘hemmes est menu’. It is the Removal Applicant’s contention that none of these internet searches reveal use of the Trade Mark by the Removal Opponent in respect of the Relevant Goods. The Removal Opponent submits that the search results are not surprising given the Removal Opponent’s class 16 goods are not provided to other traders but are provided solely as part of the Removal Opponent’s own venue services. In my view, this is precisely the issue with respect to the Removal Opponent’s class 16 goods; they are produced solely for the Removal Opponent’s benefit and are not provided ‘in the course of trade’.

9. In summary, on my assessment of the evidence, I am not satisfied that the Opponent has used the Trade Mark in Australia during the Relevant Period in respect of the Relevant Goods. Evidence relating to the Relevant Period is limited and to the extent that the evidence demonstrates use of the Trade Mark or a substantially identical sign, it is in connection with restaurant services or as an event space rather than use as a trade mark in relation to printed matter or other of the Relevant Goods.  

Obstacles to use

1. The Removal Opponent may rebut an allegation of non-use by establishing that a failure to use the Trade Mark in the Relevant Period in relation to the Relevant Goods was ‘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’.[15] The circumstances must be of serious weight.[16]

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

   [16] Australian Trade Marks Manual of Practice and Procedure, Part 48.10.

2. Circumstances which may be considered genuine obstacles to use of the trade mark were discussed by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds (‘Woolly Bull’). The relevant principles can be summarised as follows:

• It must be established that, but for the obstacle to use, the registered owner would have used the trade mark.

• There must be a causal link between the relevant circumstances and the non-use of the trade mark.

• Circumstances of a trading nature that impact only the registered owner of a trade mark can be relied on to justify non-use. The circumstances in question, however, must arise from or comprise events external to the registered owner; they cannot be due to the conduct of the relevant owner.

• The circumstances must be ‘of a trading nature’ in the sense that they are capable of disrupting trade in the area of commercial activity in which goods bearing the trade mark are traded. The wording of the Act allows for ordinary incidents of the trade cycle, as well as unusual or abnormal ones.

• The circumstances need not exist throughout the entire non-use period but must exist during more than a de minimis part of that period.[17]

  [17] Woolly Bull (n 7), [46]-[58].

1. The Removal Opponent submits that the impacts of the COVID-19 pandemic prevented the Removal Opponent from making substantial use of the Trade Mark during the Relevant Period. It is submitted that the pandemic and subsequent lockdown restrictions imposed by the New South Wales government from approximately March 2020 to October 2021 were beyond the ability of any trader to foresee or control, and severely impacted the commercial operations of all hospitality and event providers. The Removal Opponent states that the financial consequences of the lockdown period impacted the Removal Opponent’s ability to re-commence the Restaurant’s operations as a fine-dining venue after the restrictions were lifted, however the Removal Opponent endeavoured to continue use of the Trade Mark by way of private events. The Removal Opponent notes that the lockdowns existed for more than a de minimis part of the Removal Period.

2. The Removal Applicant submits that the obstacles to use of the Trade Mark claimed by the Removal Opponent are not substantiated by the evidence. The Removal Applicant states that the closure of the Restaurant was due to the commercial and financial decisions of the Removal Opponent, rather than the lockdown restrictions or other events external to the Removal Opponent. The Removal Applicant submits that the decision to cease the Restaurant’s operations evidences the Removal Opponent’s abandonment of the Trade Mark. In this regard, the Removal Applicant notes that the Restaurant did not recommence operating as a fine-dining venue ‘notwithstanding that there are no obstacles to it reopening after such an extended period of closure’,[18] being the period of five and a half years from the date of closure of the Restaurant to the date of the Removal Opponent’s Submissions. The Removal Opponent’s plans to reopen the Restaurant are said to be contrary to good faith.

   [18] Removal Applicant’s Submissions, [6.2].

3. I consider the Removal Opponent has not provided any cogent evidence that the lockdown restrictions during the COVID-19 pandemic were an obstacle to use of the Trade Mark during the Relevant Period. The decision to close the Restaurant occurred prior to the COVID-19 pandemic and although the closure was stated to be temporary for the purpose of renovations, this is not apparent from the documentary evidence. Further, it is not clear how the lockdowns were an obstacle to use of the Trade Mark in relation to the Relevant Goods in circumstances where the Removal Opponent was able to continue to provide its goods and services by way of private events during the Relevant Period. I note also that the extensive delay in the planned re-opening of the Restaurant subsequent to the lifting of the lockdown restrictions is difficult to overlook, particularly given the Restaurant’s membership of the extensive and evidently well-resourced Merivale group. Overall, I am not persuaded that the lockdown restrictions comprise circumstances consistent with the abovementioned principles espoused in Woolly Bull.

Registrar’s discretion

1. If satisfied that it is reasonable to do so, the Registrar may decide that the Trade Mark should not be removed from the Register, even if the ground on which the removal application was made has been established.[19] The Act provides the Registrar with a broad discretion not to remove the Trade Mark from the Register in respect of any, or all, of the goods for which removal has been sought.[20]

   [19] Act s 101(3).

   [20] Ibid.

2. The exercise of discretion is not one that should be exercised lightly, as stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[21]

   [21] [2002] FSR 51 (Ch) 790, [19(a)].

3. A decision to exercise the discretion is guided by the public interest, although the private commercial interests of the relevant parties also need to be recognised.[22]

   [22] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (Flick J).

4. The Removal Opponent bears the onus of persuading the Registrar that it is reasonable that the Trade Mark should not be removed.[23]

   [23] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ); Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

5. In the Removal Opponent’s Submissions, the following factors are said to be relevant to the discretion:

(a)The Removal Opponent’s continued use of the Trade Mark for events, including use in respect of the Relevant Goods, during and after the Relevant Period;

(b)The Removal Opponent’s intention to re-open the Restaurant to the general public. The continued use of the Trade Mark in connection with the Relevant Goods is stated to be essential to these plans;

(c)The Removal Opponent has used the Trade Mark continuously since the opening of the Restaurant more than two decades ago, which has involved significant investment in promotion of the Trade Mark;

(d)Removal of the Registration would reduce the scope of the Removal Opponent’s rights in the Trade Mark and harm its commercial interests, as the Relevant Goods are essential to the provision of restaurant and event services under the Trade Mark.

1. With respect to factor (a), as discussed above in relation to the evidence of use of the Trade Mark I have not found that there has been use of the Trade Mark in respect of the Relevant Goods.

2. In relation to factor (b), the Removal Opponent has not provided evidence of an intention, prior to the filing of the Removal Application, to re-open the Restaurant to the general public. I am therefore not satisfied that the Removal Opponent has an intention in good faith to use the Trade Mark in respect of the Relevant Goods. Additionally, for the reasons discussed above with respect to the Removal Opponent’s evidence of the application of ‘est’ or similar to menus and other printed matter, I am not persuaded that use of the Trade Mark with respect to the Relevant Goods is essential to the Removal Opponent’s business.  

3. As regards factor (c), it is claimed in the SGP that the Removal Opponent or its predecessor in title has, either directly or through a licensed third party, made longstanding use of the Trade Mark including in respect of paper goods, printed matter, stationery and photographs, and as a result of this use the Trade Mark has generated an extensive and widespread reputation amongst a significant number of Australian consumers. The Removal Opponent submits that its reputation is evident from the third party media articles and accolades provided in Exhibit SD-3 to Duncan 1. In my view, the evidence demonstrates that the Restaurant had acquired a reputation in the Sydney dining scene prior to its closure in 2019. However, I do not think the evidence demonstrates that this reputation extended to the Relevant Goods. Further, given the length of the Restaurant’s closure period, I consider the reputation with respect to the Trade Mark is likely to have diminished over time. I note also that the Removal Opponent has not provided any documentary evidence with respect to its claims of significant investment in the promotion of the Trade Mark with respect to the Relevant Goods.

4. It is further stated in the SGP that it is not in the public interest for the Registration to be removed, either partially or otherwise, as this may lead to public confusion with respect to the trade origin of goods or services branded with ‘est’ provided by the Removal Applicant without the authorisation of the Removal Opponent. The Removal Applicant submits that there can be no confusion in the public mind as the Removal Applicant operates in the field of media publications, and the Removal Opponent operates in restaurants. For the reasons already discussed I am not persuaded that the reputation of the Trade Mark in relation to the Relevant Goods is such that there is a genuine risk of public confusion as to the trade origin of the Removal Applicant’s ‘est’ branded goods and services.

5. As regards factor (d), for the reasons already discussed I do not consider the continued registration of the Trade Mark with respect to the Relevant Goods to be essential to the Removal Opponent’s business.

6. Overall, the public interest is not served by allowing the Trade Mark to remain registered in respect of the Relevant Goods. The Removal Opponent’s evidence focuses on its use of the Trade Mark in relation to restaurant and catering services. I am not persuaded that the removal of the Trade Mark in relation to the Relevant Goods would result in public confusion or practically impact on the commercial interests of the Removal Opponent. For these reasons, I decline to exercise the discretion.

Decision

1. The Removal Opponent has not established its opposition under s 92(4)(b) to the partial removal of the Registration and I am not satisfied that it is reasonable to exercise the Registrar’s discretion. Accordingly, the application for partial removal of trade mark registration number 1164556 is successful and I direct that, not less than one month from the date of this decision, the specification of registration number 1164556 be amended to:

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages

1. 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 registration be dealt with as the Court sees fit.

Costs

1. Both parties requested an award of costs. Costs generally follow the event, and I see no reason to depart from that principle in this matter. As such, I award costs against the Removal Opponent in accordance with the amounts set out in Schedule 8 of the Regulations.

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

22 July 2025