Opposition by Ping shi to application under section 92 of the
[2025] ATMO 128
•27 June 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Ping shi to application under section 92 of the Trade Marks Act 1995 (Cth) by Shenzhen Yaodatong Electronic Technology Co., Ltd to remove trade mark number 2151036 (class 18) – MATEIN (word) - in the name of Ping Shi
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Self-represented Applicant: Patents Au Pty Ltd |
Decision: | 2025 ATMO 128 Trade Marks Act 1995 (Cth) – application under section 92 – requisite intention not demonstrated – use by the registered owner or authorised user not demonstrated – discretion not exercised – trade mark to be removed |
Background
This matter concerns an application under s 92(4)(a) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking removal of a trade mark from the Australian Register of Trade Marks (‘Register’). I extract the details of the trade mark below:
Trade mark number: 2151036
Trade mark: MATEIN (‘Trade Mark’)
Owner: Ping Shi
Filing date: 23 January 2021
Goods: Class 18: Backpacks; Backpacks for carrying infants; Collars for animals; Collars for cats; Dog collars; Bags (envelopes, pouches) of leather, for packaging; Bags made of leather; Boxes made of leather; Boxes made of leather boards; Boxes of leather or leather board; Chin straps, of leather; Furniture coverings of leather; Labels of leather; Leather bags; Leather belts (shoulder); Leather boxes; Leather cloth; Leather shoulder belts; Leather shoulder straps; Leather travelling suitcases; Leather trimmings for furniture; Leather wallets; Shoulder belts (straps), of leather; Tool bags of leather (empty); Travelling sets (leatherware); Beach umbrellas (portable); Combination walking sticks and umbrellas; Covers for umbrellas; Garden umbrellas; Handles for umbrellas; Market umbrellas (portable); Shade umbrellas (portable); Sunshades in the nature of umbrellas; Umbrellas; Articles of clothing for animals; Leg pads being protective clothing for animals; Leashes for animals; Leather leashes (‘Registered Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
On 5 March 2024, Shenzhen Yaodatong Electronic Technology Co., Ltd (‘Removal Applicant’) filed a request for removal of the Trade Mark for non-use under s 92(4)(a) for all of the Registered Goods.
On 9 April 2024 Ping Shi (‘Removal Opponent’) filed a Notice of Intention to Oppose the application for removal. On 8 May 2024 the Removal Opponent filed its Statement of Grounds and Particulars and on 5 June 2024 the Removal Applicant filed its Notice of Intention to Defend.
On 11 September 2024 the Removal Opponent filed its Evidence in Support (‘EIS’) being a declaration of Ping Shi, the owner of the Trade Mark, purportedly dated 3 October 2024, with various unlabeled attachments (‘Shi’).
On 2 January 2025, the Removal Applicant filed its Evidence in Answer (‘EIA’) being a declaration of Ye Junjie, operations manager of the Removal Applicant, dated 31 December 2024, with Exhibits YJ1 to YJ13 (‘Junjie’) and a declaration of John Gibbs, patent attorney for the Removal Applicant, dated 2 January 2025 (‘Gibbs’).
On 3 March 2025, the Removal Opponent filed an unsigned and undated one page letter, which does not contain the name of any author (‘Letter’).
None of the parties filed a request to be heard. On 14 April 2025, the Removal Applicant requested a decision without a hearing. I am to decide the matter as a delegate of the Registrar of Trade Marks (‘Registrar’).
Evidence
EIS
Shi refers to the Trade Mark and most relevantly declares:
…
Continuous Use in Commerce: MATEIN has been actively used in commerce since its inception. We have included sales data and financial records demonstrating the commercial activity associated with our brand.
Distinctiveness and Consumer Recognition:
MATEIN has gained significant recognition and distinctiveness among consumers in the Australian market. We have gained testimonials from satisfied customers, market research data showing consumer awareness and loyalty to our brand.
Compliance with Australian Trademark Laws: We affirm that our brand, MATEIN, complies with all relevant laws and regulations governing trademarks in Australia. We have ensured that our brand does not infringe upon any existing trademarks or intellectual property rights held by other parties.
Response to Complaint Allegations: Regarding the Removal application for non-use, we will make the following rebuttal. We have a complete procurement and sales channel, please refer to the attachment, procurement invoice, and sales list. Our finance personnel have found a purchase invoice that shows the specific ASIN of the backpack (on the Amazon website), namely B09Z996DJY, for a total of 30 pieces. We sell these MATEIN backpacks on the Amazon Australia site, along with several Amazon order transaction screenshots. Please take a look. Offline, we are also consistently selling MATEIN backpacks. There are 2 sales receipt pictures attached.
…
Shi mentions that ‘Offline, we are also consistently selling MATEIN backpacks. There are 2 sales receipt pictures attached’. What appear to be two sales receipts are shown in handwritten Chinese characters and dated 25 September 2023 and 8 December 2021 which mention the name ‘Jack’. There is no translation of these documents or information which contextualises them in the evidence. Despite being dated almost two years apart, the ticket numbers on the receipts are sequential from ‘No 0374883’ to ‘No 0374884’. There is no way to verify in the evidence that any alleged offline sales have been directed to Australia.
A screen capture of a listing which appears to be on Amazon. dated 3 May 2022, (‘Amazon Listing’) has also been filed by the Removal Opponent. Whilst the Amazon Listing shows the Trade Mark in relation to bags there is no account name or seller information provided. The Amazon Listing contains an Amazon Standard Identification Number (‘ASIN’). I extract a copy of the screen capture at Schedule 1 to these written reasons.
A purchase invoice referred to in Shi, which is dated 25 March 2025 (‘Purchase Invoice’), is in Chinese characters and without a translation. The ASIN which is referred to in the Amazon Listing dated 3 May 2022 appears again in the Purchase Invoice.
There are also three screenshots of records from (‘Amazon’). for transactions purporting to be for the sale of backpacks (the ‘Amazon Transactions’) which show the word ‘MATEIN’, to purchasers with Australian addresses. The account name for the Amazon Transactions appears to be ‘GHUANGYISHANGMAO’. There is nothing in evidence which corroborates a connection between the Removal Opponent and this account. The Amazon Transactions otherwise have the following details:
Friday 20 October 2023, price $125
Friday 20 October 2024, price $125
Monday 13 November 2023, price $103.43
EIA
Junjie provides background to the activities of the Removal Applicant. The Removal Applicant is the owner of various registered trade marks containing the word ‘MATEIN’ in the United States of America, the United Kingdom, Canada, Singapore, the European Union, India, Japan, Mexico, Indonesia, Brazil and the United Arab Emirates. Some of these for the United States of America, the United Kingdom and the European Union, were registered between 2017 and 2018.
The Removal Applicant has operated an account Amazon. The EIA also shows listings on Amazon dated from 2017 onwards. It also has operated a website at wwww.matein.com which is directed to Australia since 2020.
There is a low, though continuous, rate of established sales for Australia by the Removal Applicant for backpacks which have borne the word ‘MATEIN’.
Junjie declares that sales have been impacted by the activities of the Removal Opponent. Regarding these activities, Junjie also declares that on 17 February 2022, the Removal Applicant received a complaint warning from Amazon relating to products sold in Australia. The complaint apparently consisted of the following text:
Right’s owner’s communication content: Dear, this seller is selling fakes, please help us remove, thanks
Infringement type: Counterfeit goods
Trademark claimed: 2151036
Complaint number 2290877913
Junjie declares that a search was conducted of Ping Shi’s information on Amazon and no results were yielded.
Junjie adds that the Removal Applicant then sought to negotiate with the Removal Opponent. An exchange on WeChat occurred between the Removal Opponent and the Removal Applicant, which is translated at Exhibit YJ10 to Junjie. Junjie declares that after initial contact by the Removal Applicant, the reply of the Removal Opponent was for them to immediately attempt to sell the Trade Mark to the Removal Applicant.
Gibbs provides results from research conducted about the Removal Opponent. Gibbs makes a number of allegations about the actual ownership of trade marks appearing on the Register in the name of the Removal Opponent.
Where relevant, I otherwise refer to the EIA throughout these written reasons.
Letter
The Letter is short and does not provide any details. The Letter most relevantly states the following:
Firstly, my trademark is legal and we have not engaged in any violations. We have been operating in compliance with the law and are entitled to protection from the Australian trademark management authorities.
Secondly, this trademark belongs to us, and how we operate it has nothing to do with others. They have no right to accuse us. They have no right to deny our trademark and rightful rights.
Relevant statutory provisions
Section 92(4)(a) relevantly provides:
92 Application for removal of trade mark from Register etc.
…
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed…
An application for removal of a trade mark under s 92(4)(a) may be made at any time after the filing of the application to register a trade mark. Section 100(1) places the onus on the Removal Opponent to rebut the allegations that the applicant for registration of the Trade Mark had no intention to use or authorise use of the Trade Mark on the day that it was filed or that the registered owner of the Trade Mark used the Trade Mark at any time before the period of one month ending on which the day the application for removal was made (‘Relevant Period’). I note that in this matter the Removal Opponent was the applicant for registration of the Trade Mark and is the registered owner of the Trade Mark.
Section 100(2) provides that an opponent is taken to have rebutted the allegation of non-use in relation to s 92(4)(a) if it establishes that the trade mark (or a trade mark without additions or alterations substantially affecting its identity) was used in good faith by the registered owner before the Relevant Period. Note 1 to s 100(2) allows for authorised use to be taken as use by the registered owner in accordance with s 7(3).
Section 101(1) provides that the Registrar may remove a trade mark for any or all of the goods or services to which the application for removal relates, if satisfied that the grounds for removal are established. Alternatively, s 101(3) gives the Registrar a discretion not to remove a trade mark, even where the grounds for removal are established. Section 101(4) provides examples of matters the Registrar may take into account in deciding whether to exercise the discretion but does not limit the matters the Registrar may take into account.
I proceed on the basis that the standard of proof required of the Removal Opponent is on the balance of probabilities.[2]
[2] 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 of the Act.
Consideration
Evidence which establishes the matters at numbers (i) to (v) to s 92(4)(a) will cause the opposition to the application to succeed. To the extent that the Removal Opponent seeks to rely on any of either an intention to use the Trade Mark and/or use of the Trade Mark, including authorised use, it is for the Removal Opponent to establish as much. If the Removal Opponent can demonstrate any of these then the opposition will succeed. However, it is for the Removal Opponent to demonstrate each or any of these limbs.
Use by the registered owner or an authorised user
Use by the registered owner
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J stated:
The expression “use in good faith” has a well understood meaning in this context, viz, real, as opposed to token, use in a commercial sense.[3]
[3] [2001] FCA 261, [16].
A small degree of use can qualify as genuine, as opposed to token, in a commercial sense.[4] However, but if a single act of use is relied on, it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5]
[4] E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).
[5] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
The closest thing to use of the Trade Mark appearing in the EIS and Letter are the screen captures from Amazon which appear to show sales of goods either bearing the Trade Mark or with the Trade Mark used in relation to sale of backpacks.
I note that the only goods appearing throughout the evidence are backpacks. Accordingly, there is broadly no use demonstrated in relation to any other Registered Goods.
Regarding the Amazon Listing, Junjie declares:
…the backpack shown in the product photo is clearly not a MATEIN backpack. The label showing on the backpack is “FASHION”, which is a label used on completely generic low-cost low quality goods. For example, annexed hereto as Exhibit YJ13 is a copy of a Temu listing for an identical FASION backpack with a price of $12.47. The only difference is that the FASHION label has been rendered differently.[6]
[6] Junjie, [30].
Regardless, I note that there is nothing which corroborates a connection between the Removal Opponent and the Amazon Listing. Accordingly, this evidence does not assist the Removal Opponent.
Regarding the Amazon Transactions, I note that there is also nothing which connects the Removal Opponent with these purported sales. The name of the seller is specified as ‘GHUANGYISHANGMAO’. There is nothing in evidence which connects this account or such a person with the Removal Opponent.
Junjie also addresses the Amazon Transactions in the following manner:
Each of these items was purportedly sold at a price much higher than the price at which we sell MATEIN travel laptop backpacks. Even if the sales records are in fact genuine, this suggests that the seller did not seriously intend to sell many backpacks. It is not clear whether the seller purchased genuine MATEIN backpacks from us and then resold them at a higher price to the purchasers, or whether he fraudulently sent the purchasers the cheap low-quality “FASHION” backpacks shown in the product listing. In any event, the sales, if they occurred, do not appear to be genuine commercial sales.[7]
[7] Junjie, [33].
The Amazon Transactions appear to have as their subject, goods which were originally produced by the Removal Applicant. As the backpack shown in these transactions bears some resemblance to a backpack supplied by the Removal Applicant in for example 2018 on Amazon, for example at Exhibit YJ2 to Junjie.[8] Junjie directly alleges that the Removal Opponent had purchased backpacks of the Removal Opponent and that it is those which form the subject of the sales mentioned in the Amazon Transactions. The Removal Opponent offers nothing in reply to this evidence.
[8] Exhibit YJ6, 119. See also, Exhibit YJ2, 21 to 23.
Regarding the hand written receipts in Chinese characters, I give this evidence little weight as there is no translation in evidence. The amounts owing are presented in Chinese Yuan. Furthermore, I cannot be satisfied by the evidence that these transactions, if they even occurred, were for sale of products in Australia.
Regarding the Purchase Invoice for the alleged purchase of 30 backpacks which mentions the trade mark ‘MATEIN’, this is dated 25 March 2024, which is dated after the day on which the application for removal was filed. The Purchase Invoice includes a reference to the ASIN mentioned in the Amazon Listing despite the transaction not being a sale by Amazon and is apparently for the supply of the stock to the Removal Opponent from within China.
The EIS, especially when read in the light of the EIA, does not demonstrate use of the Trade Mark by the Removal Opponent before the Relevant Period. Importantly, the evidence at every turn fails to corroborate any link between a purported seller and the Removal Opponent. Even if any of the use is presumed to be genuine use, it is at best likely made by persons who are not the Removal Opponent.
I am not satisfied that to the extent that there is any use of the Trade Mark shown in the evidence, that use has been by the Removal Opponent.
Authorised use
The evidence also does not show effective control by the Removal Opponent of any relevant use of the Trade Mark by a person other than the Removal Opponent.
I confirm that I am also not satisfied the evidence establishes that any relevant transactions or activities were performed by an authorised user.
Intention to use or authorise use of the Trade Mark
I turn to consider ss 92(4)(a)(i) and (ii). Though the onus, as framed by the terms of s 100, is squarely on the Removal Opponent in this matter, that onus has sometimes been said to be not particularly arduous. In Aston v Harlee Manufacturing Co, Fullagar J observed:
… the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.[9]
[9] [1960] HCA 47, [21].
The delegate in Structureco Inc v Starite Distributors Pty Ltd stated:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[10]
[10] [2000] ATMO 31 (Hearing Officer Forno).
Evidence of an opponent will sometimes make a prima facie case that there was an intention to use the trade mark, for example, by way of a declaration of an owner or one of its officers attesting to that intention.[11] A clear and direct statement from a person with knowledge of the material particulars combined with the existence of the application for registration of a trade mark has been said to be sufficient to discharge the onus in this regard. Here, the evidence barely reaches that point and the Removal Opponent fails to answer challenges posed by the EIA. I note that there is no direct statement from the Removal Opponent regarding an intention to use the Trade Mark on the day on which the application to register the Trade Mark was filed.
[11] For example, in Watermill International (Australia) Pty Ltd v David M Windmiller [2010] ATMO 30, [14] (Hearing Officer H Wilson) and in Shan Patterson v Harold Van Haltren [2025] ATMO 22, [35] (Hearing Officer Tuohy).
In Li Ma v Chowbus Inc the delegate noted:
… The phrase ‘intention in good faith’ means a ‘genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions’. This is not a case where the Trade Mark has a long history and the intention of the applicant at the time of filing the Trade Mark cannot be determined. Nevertheless, there is no evidence that [the applicant] intended to use the Trade Mark for commercial purposes, authorise use of the Trade Mark or assign it to a body corporate for its use. In fact, the EIS indicates that he had no such intention and filed the Trade Mark for the sole purpose of assigning it to the Removal Opponent upon registration. This is not a proper basis for filing a trade mark under s 27 … and does not constitute an intention to use the Trade Mark in good faith sufficient to successfully oppose the Removal Application. I am satisfied that the applicant, [the applicant], did not have an intention to use the Trade Mark in good faith at the time of filing.[12]
[12] [2023] ATMO 104, [33] (Hearing Officer Berger) (emphasis added).
In deciding this matter, of particular concern is the WeChat Exchange in Junjie at Exhibit YJ10. The WeChat Exchange suggests a pattern of conduct whereby (1) the Removal Applicant intended to become the registered owner of a trade mark; and (2) use the registered ownership as a basis for complaints on Amazon about another trader’s listings to disrupt their sales so as to apply pressure to sell the trade mark to that other trader. Whilst there are some statements made in the WeChat Exchange to the effect that if the Removal Applicant does not buy the Trade Mark the Removal Opponent will use it, these must be read in light of what appears to be bargaining between the parties. If the Removal Opponent’s statements are taken as statements of any intention, they are at best conditional, intermediate and unsettled intentions. The purpose of filing of the application for registration of the Trade Mark on the balance of probabilities appears to be one concerned solely with the so called ‘trade in trade marks’.[13] One of the very first things of substance said to the Removal Applicant by the Removal Opponent in the WeChat Exchange on 8 April 2022 is, ‘if you don’t plan to buy this trademark, I will sell the goods myself’ and then they appear immediately prepared to dispose of the Trade Mark. On 18 April 2022, the Removal Opponent stated, ‘if you don’t want to buy this trademark, I will sell the products myself in Australia’ and ‘I’ll be frank with you guys. If I sell the products in Australia, I’ll knock you out of the top spot in the US if you mess with me’. All of these statements, rather than evincing a genuine intention to use the Trade Mark in good faith, demonstrate the Removal Opponent’s strategy to apply pressure on the Removal Applicant to achieve the sale of the Trade Mark for the apparent equivalent of $65,000 (AUD). At the outset of the interactions between parties, the Removal Applicant appears to have been very ready and prepared to immediately dispose of the Trade Mark. The material in Exhibit YJ10 evidence intentions which I consider to be something other than genuine intentions to make commercial use of the Trade Mark. The Removal Opponent provides nothing which contests these matters in substance.
[13] Wal-Mart Stores, Inc v Ozark-London Ltd [2004] ATMO 33 (Hearing Officer Thompson).
I note that nothing in the evidence shows anything close to use of the Trade Mark in the EIS or Letter which is dated before the communications with the Removal Applicant in the WeChat Exchange. This also heightens the probability that the filing of the Trade Mark was for the purpose of achieving a trade in the Trade Mark itself.
In Danjaq LLC v Resource Capital (Aust) Pty Ltd (‘Danjaq’) the delegate viewed the history of the Removal Opponent as indicating an intention to trade in trade marks and a lack of intention was inferred for the purposes of s 59.[14] When considering the intention to use a trade mark, past conduct such as past filing activities of a person may be a relevant consideration.
[14] [2004] ATMO 18 (Hearing Officer Thompson).
I note the allegations in Gibbs that 12 other trade marks appearing on the Register in the name of the Removal Opponent have true owners other than that person. Gibbs also notes four unsuccessful applications for trade marks made by the Removal Opponent as well as the suggested true owner for each. There is also one application for registration of a trade mark filed by the Removal Opponent which was successfully opposed. There is also one other registered trade mark against which there is apparently a non-use application filed. Little in the way of a methodology for basing the allegations is detailed other than the checking of foreign registers. There is no information about the events surrounding the filing of these trade marks. The filings of the Removal Opponent here do not, for example, consist of 20 lapsed applications as it did in Danjaq. However, I do consider that these allegations should be read in light of the matters raised by the WeChat Exchange and other evidence. In the WeChat Exchange the Removal Opponent also states, ‘we have many trademarks like yours and have had many operational experiences’. The material in Gibbs contributes somewhat to the cloud of doubt I might have about the intention of the Removal Opponent to use the Trade Mark at the time of filing of the application. The Removal Opponent offers little in reply.
The other documents in evidence, such as the Purchase Invoice, do not assist the Removal Opponent individually or in combination in demonstrating a requisite intention.[15]
[15] Swole Gym Wear Group Pty Ltd v Swole O'Clock Ltd [2019] FCA 685, [34] (Steward J).
Overall I do consider the evidence to raise a sufficient cloud of doubt that requires a direct response from the Removal Opponent, of which nothing of substance has been forthcoming.[16] On review of the combination of evidence before me, I am not satisfied that the Removal Opponent has discharged the onus regarding the intention to use, or authorise use of, the Trade Mark. Nor am I otherwise satisfied that on the balance of probabilities, the Removal Opponent held such an intention at the time of filing the application for the Trade Mark.
[16] Republic Consulting Pty Ltd v Nhan Chiem [2008] ATMO 20, [51] and [52] (Hearing Officer Williams).
In relation to s 92(4)(a)(ii) where it refers to an intention to authorise use of the Trade Mark, I confirm that I also am not, for example, satisfied that the Removal Opponent had an intention to authorise use of the Trade Mark.
I also note that there is no evidence that discharges the onus to show an intention to assign the Trade Mark to a body corporate for use by the body corporate in Australia as mentioned in s 92(4)(a)(iii). Such an intention must also be an intention held in good faith. Whilst there appears to be an intention from the evidence of the WeChat Exchange that a person intended to sell the Trade Mark to the Removal Applicant, this does not meet the description of what is mentioned in s 92(4)(a)(iii) in the circumstances.
Conclusion
For the reasons set out above, the Removal Opponent has not demonstrated that they, or an authorised user, used the Trade Mark in Australia before the Relevant Period in respect of the Registered Goods, nor has it demonstrated that they had a requisite intention as at the filing date of the application for registration of the Trade Mark. I am not satisfied that the Removal Opponent has rebutted the allegations made under s 92(4)(a).
Registrar’s discretion
By s 101(3) the Registrar has a broad discretion to not remove the Trade Mark from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. I must consider whether this discretion should be exercised in relation to the Registered Goods. However, the Removal Opponent need not establish ‘exceptional circumstances’.[17]
[17] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).
Various factors are to be considered in applying s 101. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the Federal Court observed of s 101(3) and the relevant factors:
[t]he 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.[18]
[18] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).
The Removal Opponent provides little if any evidence or any reason regarding whether I should exercise the discretion. The volume of any trade in goods bearing the Trade Mark is not clear and to the extent there are any of the Registered Goods even appearing in evidence, the scope of what is shown is slight. There is a public interest in the Register reflecting signs that are used by traders. Overall, the Removal Opponent provides no compelling reason for the Trade Mark to remain on the Register for the Registered Goods. In fact, the EIA makes a case for why the Trade Mark should be removed and this is not met with any evidence or a substantial reply by the Removal Opponent, despite it bearing the onus.
Balancing the relevant considerations and noting all of the evidence, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Registered Goods.
Decision
The Removal Opponent has not rebutted the allegation of non-use in respect of the Trade Mark and I am not satisfied it is reasonable to exercise the discretion to allow the Trade Mark to remain on the Register.
I direct that one month from the date of this decision registered trade mark 2151036 be removed from the Register.
If the Registrar is served with a notice of appeal within the relevant timeframe, the Trade Mark shall be treated in accordance with the decision of the court.
Costs
The Removal Applicant sought its costs. Costs will ordinarily follow the event. I award costs against the Removal Opponent under s 221 in accordance with Schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
27 June 2025
Schedule 1
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