Opposition by TAK Products & Services Pte Ltd to application under section 92 of the - [2025] ATMO 118

TRADE MARKS ACT 1995

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

Re:Opposition by TAK Products & Services Pte Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Dowan Kim to remove trade mark number 1931724 (classes 17 and 19) - TAK Inspiring Spaces (composite) (series) - in the name of TAK Products & Services Pte Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Collison & Co

Applicant: Spruson & Ferguson

Decision:

2025 ATMO 118

Trade Marks Act 1995 (Cth) – application under section 92 – no use of the trade mark established – no obstacles to use shown in evidence – discretion not exercised – trade mark to be removed.

Background

This matter concerns an application under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking removal of a series trade mark from the Australian Register of Trade Marks (‘Register’) for non-use. I extract the trade mark below:
[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).

Trade mark number: 1931724
Trade mark:
(‘Trade Mark’)

Owner:  TAK Products & Services Pte Ltd
Filing date:  5 June 2018
Goods:  Class 17: Plastics in the form of sheets (non-textile), rods, strips, blocks, plates, tubes and shaped sections; plastics included in Class 17 reinforced with natural or synthetic fabrics, laminated plastics in the form of sheets and panels; and laminated thermosetting plastics reinforced with fibrous materials and being in the form of sheets and panels; all for use in manufacture
Class 19: Interior decorative panels made of non-metallic materials; non-metallic laminated materials for use in building and construction; floor boards of particle board or fibreboard combined with a thermosetting laminate; parquet floor boards; composite materials of plywood and chipboard; high-density fibreboards; wood agglomerate lined with melamine sheet; plastics laminated sheets for building or for the interior decoration of buildings; laminated floor boards, not of metal; non-metallic laminated doors; laminated glasses, laminated stones, laminated ceramics; all for use in building or for the interior decoration of buildings
(‘collectively, Registered Goods’)

On 31 January 2024 Dowan Kim (‘Removal Applicant’) filed a request for removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’) for non-use under ss 92(4)(a) and (b) for all of the Registered Goods.
On 28 March 2024 TAK Products & Services Pte Ltd (‘Removal Opponent’) filed a Notice of Intention to Oppose the application for removal. On 26 April 2024 the Removal Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 22 May 2024 the Removal Applicant filed its Notice of Intention to Defend.
On 2 September 2024 the Removal Opponent filed its Evidence in Support (‘EIS’) being a declaration of Tan Aik Koon, Chairman and Managing Director of the Removal Opponent, dated 30 August 2024, with Exhibits TAK-1 to TAK-5 (‘Tan’). On 9 October 2024 the Removal Applicant advised that it would not be filing any Evidence in Answer.
On 16 October 2024, the Removal Opponent requested to be heard by way of written submissions only. On 8 November 2024, the Removal Applicant also requested to be heard. On 4 February 2025, the Removal Opponent filed written submissions prepared by Anthony Norris of Collison & Co (‘Removal Opponent’s Written Submissions’). On 11 February 2025 the Removal Applicant filed written submissions prepared by Daniel Wilson and Madeline Connolly of Spruson & Ferguson. I am to decide the matter as a delegate of the Registrar of Trade Marks.

Relevant period and onus

Section 92 relevantly provides:
92 Application for removal of trade mark from Register etc.
(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note: For prescribed court see section 190.
(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;
(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.
Note 3: For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.
(5) If the right or interest on which a person relied to make a non‑use application becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first‑mentioned person as the applicant.
The non-use application was filed on 31 January 2024 and complies with s 93 of the Act. The applications nominated grounds under ss 92(4)(a) and (b) of the Act.[2] However, given the way that s 92(4)(a) is drafted, this provision in summary merges with s 92(4)(b) once a trade mark has been registered for 5 years.[3] Accordingly, it is only necessary to consider the s 92(4)(b) ground.
[2] Regarding the s 92(4)(b) ground, see Act s 93(2) prior to amendments to s 93(2) by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3. Section 93(2) in its amended form applies to trade mark applications filed from 24 February 2019 onwards.
[3] Moores MDP Pty Ltd v Moore Stephens International Licensing [2023] ATMO 86, [23] (Hearing Officer Wilson).
By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish use of the Trade Mark in Australia in the three year period ending on 31 December 2023 (‘Relevant Period’) or that the Trade Mark was not used in relation to the Registered Goods because of circumstances that were an obstacle to the use of the Trade Mark during the Relevant Period. The use can be by the owner of the Trade Mark or by an ‘authorised user’.
I proceed on the basis that any findings of fact are based on the civil standard of the balance of probabilities.[4]
[4] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).
‘Use as a trade mark’ is use of a trade mark as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and the person who applies the sign to those goods.[5] This does not require the actual sale or purchase of the goods.[6] A commercial dealing in relation to the goods under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’. A single bona fide use of the Trade Mark during the Relevant Period may be sufficient for the Removal Opponent to discharge the onus,[7] although if only a single instance of use is alleged it should be established by, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[8]
[5] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[6] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).
[7] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[8] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
If the requisite use is not established, in accordance with s 101 I may decide to remove the Trade Mark, or if satisfied it is reasonable to do so, decide to not the remove it. I explain this discretion in more detail further below.

Evidence

Tan declares that the Removal Opponent was established in 1989, has its headquarters in Singapore with regional offices in several Asian countries and distributors in a range of countries including Australia.
Tan declares that a company known as Catalyste Pte Ltd (‘Catalyste’) of Singapore is the Removal Opponent’s Singapore based Distributing Managing Agent for handling of all shipments directly to customers.[9]
[9] Tan, [9].
Tan declares that the Trade Mark is displayed as part of the ‘brands’ page of its website. Tan states that the Trade Mark acts as the ‘house’ mark for all of the activities of the Removal Opponent.[10]
[10] Tan, [3].
Exhibit TAK-1 consists of screen captures of the website (‘Removal Opponent’s Website’) which displays the Trade Mark and other signs.
A number of trade marks appear in the EIS. This includes the following sign:

(‘TAK-Star Logo’)

Exhibit TAK-2 contains extracts from the Register showing the following trade marks which are all in the name of the Removal Opponent:

(‘Lamitak Logo’)

Exhibit TAK-3 consists of an invoice, dated 21 December 2022 (‘Invoice’) which shows the TAK-Star Logo. The goods listed in the description of the Invoice are all goods with names that begin with the word ‘Lamitak’ alongside various product codes. The place of delivery is a company named Surteco Australia Pty Ltd (Sydney). The authorised signatory for the Invoice uses the name of the Removal Opponent.
Exhibit TAK-4 consists of purchase orders, both dated 19 December 2022 (‘Purchase Orders’) from a business named Surteco Australia. Tan declares that the Invoice was issued in response to the Purchase Orders.[11] The Supplier name is Catalyste Pte Ltd. The goods listed in the Purchase Orders all have names which begin with the word ‘LAMITAK’.
[11] Tan, [8].
Exhibit TAK-5 consists of the following photographs of a packaging box for goods, the nature of which are not self-evident:

Tan declares that Exhibit TAK-5 shows product packaging which was used for packaging goods, ‘including those which were supplied to SURETECO in response to their December 2022 orders’.[12] Tan does not specifically state which of the goods listed in the Invoice are supplied or represented in the photographs, other than perhaps stating that it is for the Removal Opponent’s ‘high pressure laminate’.
[12] Tan, [10].

Consideration

There are several problems with the evidence upon which the Removal Opponent relies in this opposition.
I begin with the observation that none of the evidence, including the Invoice and Purchase Orders, specifically identifies which of the Registered Goods the Trade Mark has potentially been applied on. The language in the Invoice and Purchase Orders appear to refer to styles such as ‘designer white’ and ‘tanned rosenheim maple’. Tan only specifies that these documents are for sale of goods bearing the Trade Mark and possibly as much as they might have been for ‘high pressure laminate’.[13] What the Removal Opponent must demonstrate is use of the Trade Mark on or in relation to the specific Registered Goods. The evidence at most mentions laminate goods of an uncertain kind. Regardless, I further examine the evidence below.
[13] Tan, [10].
In Exhibit TAK-1, whilst the .jpg file name or possibly the language embedded in the website address ‘wp-content/uploads/2022/09’ suggest a date of 2019 or 2022, the material is not clearly directed to Australia. For any use of the Trade Mark to assist it must be use in Australia. Tan itself states nothing about whether the Removal Opponent’s Website is directed to Australia. Rather, the domain address of the Removal Opponent’s Website appears to suggest that it is directed to Singapore. A second screen capture of the Removal Opponent’s website does list Australia as a location for distributors and mentions laminate products. However, this specific screen capture is undated. Accordingly, these materials at Exhibit TAK-1 do not assist the Removal Opponent.
Exhibit TAK-2 simply establishes that the Removal Opponent is the registered owner of several Australian registered trade marks.
I next consider Exhibits TAK-3 and TAK-4 and note that s 7(1) provides:
If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
The Invoice at Exhibit TAK-3 does not show the Trade Mark. At its highest it displays the TAK-Star Logo. For the evidence showing use of TAK-Star Logo to qualify as showing use of the Trade Mark I must determine whether the use amounts to use without additions or alterations which substantially affect the identity of the Trade Mark.[14] I must compare each of the trade marks side by side, note the similarities and differences and assess the importance of these having regard to the essential features of the trade marks.[15] In order to find that additions or alterations do not substantially affect the identity of a trade mark, ‘it is necessary to find that a total impression of similarity emerges from a comparison between the two marks’.[16]
[14] Section 7(1).
[15] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12](Windeyer J) (‘Shell’).
[16] Optical 88 Limited v Optical 88 Pty Limited (No 2) (Includes Corrigendum dated 26 May 2011) [2010] FCA 1380 (Yates J), citing Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [61] (Gummow J) and Shell ibid [12].
I note the additional words ‘Inspiring Spaces’ present in the Trade Mark are not present in the TAK-Star Logo. I view these words are being an essential element of the Trade Mark. These differences are important and amount to additions or alterations which substantially affect the identity of the Trade Mark, such that a total impression of similarity does not emerge. Accordingly, the Invoice and Purchase Orders do not assist, individually or in combination with any of the other Exhibits, to show use of the Trade Mark.
I next consider Exhibit TAK-5. I note the Removal Opponent’s Written Submission that:
…both trade mark elements, the six pointed star followed by TAK, and the words Inspiring Spaces appear on the Opponent’s packaging as exhibited as (sic) TAK-5. To the degree that these two elements do not appear on the packaging on consecutive lines as they appear in the trade mark registration, it is the Opponent’s contention that their presentation and use on the packaging meets the requirements (as outlined above) as being use of the trade mark with additions or alterations not substantially affecting its identity.[17]
[17] Removal Opponent’s Written Submissions, [23].
In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd the High Court commented that:
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.[18]
[18] [2023] HCA 8, [25] (citations omitted).
The proximate use of constituent elements of a trade mark will not always result in a finding of use of that trade mark. In finding that the usage of a slogan phrase in proximity to various device marks was usage separate to each of these marks and not usage of a trade mark which combined those two elements as one trade mark, the delegate in Red Rooster Foods Pty Ltd noted:
It is undoubtedly true that a trader may use multiple trade marks in relation to the same goods or services, such as a house mark and a trade mark for specific line or brand (for example, INTEL PENTIUM). The question of whether the placement of two distinct elements on packaging is use of two trade marks, one trade mark or a trade mark and something else can be a difficult question to resolve and it depends on an evaluation of the context of the use of the respective elements.[19]
[19] [2019] ATMO 160, [32] (Hearing Officer Smith).
I note my finding that the TAK-Star Logo is not substantially identical with the Trade Mark. The sign consisting of the words ‘A TAK Surfaces Lifestyle Brand’ after a star element that is similar to that in the Trade Mark (‘TAK-Star Logo-2’) overall also does not appear to be substantially identical with the Trade Mark. The words ‘Inspiring Spaces’ and TAK-Star Logo-2, as appearing in the Exhibit TAK-5, are separated by and appear between the centrally located Lamitak Logo. The elements of TAK-Star Logo-2 together have a relatively smaller size compared with the other signs on the packaging. The manner of use of TAK-Star Logo-2 on the same label with the additional words does not appear, for example, closely proximate or as a totality with the words ‘Inspiring Spaces’. The effect of the balance of the labeling here is that there is use of separate signs which happen to be in some varied proximity to each other on the same packaging. My assessment of the context of use of TAK-Star Logo-2, the words ‘Inspiring Spaces’ and other elements in the photographs at Exhibit TAK-5, is that they are so disparate and separated, that their use in combination does not constitute use of a sign which is without additions or alterations which substantially affect the identity of the Trade Mark.
Accordingly, even if I accept that the packaging of goods shipped to a customer had the trade marks shown on the packaging at Exhibit TAK-5, Exhibit TAK-5 does not assist individually or in combination with any of the other Exhibits in showing use of the Trade Mark.
For completeness, because of obvious differences I also note that I do not consider any of the other signs in the photographs at Exhibit TAK-5 to be without additions or alterations which substantially affect the identity of the Trade Mark.
I note that the evidence contains nothing which satisfies me that there were any relevant barriers to the use of Trade Mark in Relevant Period. The Removal Opponent makes no submissions to the contrary.

Registrar’s discretion

Section 101(3) provides me with 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’.[20]
[20] 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.[21]
[21] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).
The Removal Opponent refers me to the principles regarding the discretion mentioned in Societe Anonyme des Eauz Minerales d’Evian v The Yoghurt Co Pty Ltd.[22] The Removal Opponent submits that the ‘discretion may be exercised in favour of the [Removal Opponent] given that the evidence shows use of the mark in respect of goods within the scope of the registration.’ This appears to suggest that the use of TAK-Star Logo, even without the words ‘Inspiring Spaces’ might fall within the scope of the registration of the Trade Mark, perhaps in an infringement context and confusion would follow. The specific goods for which there might have been use of other trade marks also is unclear. I note that the Removal Opponent provides nothing which shows the volume of its trade in any goods in Australia. Overall, the Removal Opponent does not provide a compelling reason for the Trade Mark to remain on the Register for the Registered Goods. I am also conscious of the public interest in the Register reflecting what is used by traders.
[22] [2012] ATMO 53 (Hearing Officer Thompson).
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 1931724 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 and I award costs against the Removal Opponent under s 221 in accordance with the amounts specified in Schedule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

18 June 2025