Opposition by WISELIST PTY LTD to application under section 92 of the - [2025] ATMO 143

TRADE MARKS ACT 1995

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

Re:Opposition by WISELIST PTY LTD to application under section 92 of the Trade Marks Act 1995 (Cth) by Wise Payments Limited to remove trade mark number 1999009 (classes 9, 36 and 42) - WisePay - in the name of WISELIST PTY LTD

Delegate:

Timothy Brown

Representation:

Removal Opponent: Stephen Rebikoff, Senior Counsel, instructed by Vardon Legal

Removal Applicant: Andrew Sykes of Counsel instructed by Trioli Intellectual Property

Decision:

2025 ATMO 143

Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – opposition to removal under s 96 – use demonstrated in the relevant period for some services – Registrar’s discretion not exercised – trade mark registration partially removed from the Register.

Background

This decision concerns an application made under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] by Wise Payments Limited (‘Removal Applicant’) seeking removal of the trade mark registration detailed below from the Register of Trade Marks (‘Register’):
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade Mark Number: 1999009
Trade Mark:  WisePay (‘Trade Mark’)
Owner:   WISELIST PTY LTD (‘Removal Opponent’)
Filing Date:  28 March 2019
Goods and Services: Class 9: Computer programs for financial management; Computer programs for financial reporting; Computer programs for use in processing data relating to financial records; Computer programs relating to financial matters; Computer programs, downloadable; Computer programs, recorded; Computer software; Computer software (programs); Computer software (recorded); Computer software applications (downloadable); Computer software downloaded from the internet; Computer software for business purposes; Computer software platforms, recorded or downloadable; Computer software products; Computer software programs; Computer software programs for database management; Computer terminals for use with credit cards at point of sale; Computer terminals for use with debit cards at point of sale; Computer terminals for use with encoded cards at point of sale; Computer terminals for use with magnetic cards at point of sale; Machines for executing remote financial transactions; Electronic funds transfer machines; Apparatus for payment with magnetically encoded cards; Apparatus for payment with magnetically memory cards; Machine readable devices for cashless payment systems; Magnetic payment cards; Payment cards being magnetically encoded; Terminals for electronically processing credit card payments; Terminals for the electronic payment of charges with credit cards
Class 36: Computerised financial services; Computerised transfer of funds; Actuarial services relating to financial transactions; Conducting of financial transactions; Electronic funds transfer services; Monetary exchange; Monetary transaction services; Monetary transfer; Organisation of monetary collections; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Collection of fees, payments or tolls (for others); Collection of payments; Electronic payment services; Financial management of reimbursement payments for others; Financial payment services; Payment of bills and accounts for others; Payment processing services; Payment transaction card services; Processing of debit card payments; Processing of payments for banks
Class 42: Electronic monitoring of financial transactions and activities to detect suspicious, fraudulent or unlawful transactions and activities; Hosting of software as a service (SaaS); Software as a service (SaaS); Electronic monetary and financial transaction monitoring
(‘Registered Goods and Services’)
The application for removal is made in relation to all of the Registered Goods and Services.
The Removal Opponent filed a Notice of Intention to Oppose the application for removal of the Trade Mark on 14 March 2023, followed by a Statement of Grounds and Particulars on 4 April 2023. The Removal Applicant filed a Notice of Intention to Defend on 31 May 2023.
The Removal Opponent filed evidence in support of the opposition on 12 September 2023. The Removal Applicant filed evidence in answer on 5 February 2024. The Removal Opponent filed evidence in reply on 19 March 2024.
Following the end of the evidence stage, the parties requested to be heard. The matter was heard before me, a delegate of the Registrar of Trade Marks (‘Registrar’) on 22 April 2025. The Removal Opponent was represented by Stephen Rebikoff SC, instructed by Fiona Trethewey of Vardon Legal. The Removal Applicant was represented by Andrew Sykes of Counsel instructed by Adrian Trioli and Noelene Treloar of Trioli Intellectual Property.

Evidence

The following evidence was filed:

Declarant and Position	Date	Annexures or Exhibits
Evidence in Support
Jinjun Liu, Director of the Removal Opponent (‘Liu’)	12 September 2023	JL-1 to JL-7
Evidence in Answer
Anastasiia Litvinenko, Junior Counsel of the Removal Applicant (‘Litvinenko’)	5 February 2024	AL-1 and AL-2
Evidence in Reply
Jinjun Liu (‘Liu 2’)	18 March 2024	JL-1 and JL-2

Removal Opponent

Liu declares that he is the sole Director of the Removal Opponent and has been in that role since 2 March 2018.[2] Liu declares that the Removal Opponent is the owner and creator of the software application known as WiseList (‘WiseList app’) which was developed in 2018. The WiseList app allows customers to list, compare, and order supermarket products, and operates in conjunction with a payment system branded under the Trade Mark, which was subsequently developed in 2019. The WiseList app is available for download on Apple’s App Store,[3] and according to Liu, over 180,000 people have downloaded the WiseList app.[4]
[2] Liu [1]-[2].
[3] Liu Exhibit JL-2.
[4] Ibid [6].
Mr Liu declares that the Removal Opponent has used the Trade Mark in relation to all of the Registered Goods and Services. In support, Liu exhibits the following examples said to show use of the Trade Mark:

Promotions of the Trade Mark as a payment option in the WiseList app;[5]
The Trade Mark displayed as a payment option on the website (‘WiseList website’).[6] Liu exhibits screenshots of the WiseList website, sourced from the Wayback Machine Internet Archive, dated 8 August 2022 displaying use of the Trade Mark. Other undated examples of material displaying the Trade Mark are provided.[7]
[5] Ibid Exhibit JL-4.
[6] Ibid Exhibit JL-3.
[7] Ibid Exhibit JL-1.

Liu asserts that the Removal Opponent purchased the domain name on 21 June 2011.[8] Liu explains that the domain name redirects users to the WiseList website.
[8] Ibid Exhibit JL-3.
Liu also exhibits a screenshot of WeChat discussions (with English translations) between Mr Liu, his wife and a software developer regarding potential inclusion of the Trade Mark in the WiseList app.[9]
[9] Ibid Exhibit JL-6.
Liu 2 provides extracts from the Australian Trade Mark Register for two of the Removal Applicant’s trademark applications (1537319 and 2176471), along with copies of the Provisional Notices of Refusal issued for them.

Removal Applicant

The Removal Applicant is the owner of a range of trade marks incorporating the word ‘Wise’. A list of the Removal Applicant’s Australian trade marks registrations and pending trade mark applications,[10] and international trade marks is included in Litvinenko.[11]
[10] Litvinenko Exhibit AL-1.
[11] Ibid Exhibit AL-2.

Provisions, Onus and Relevant Period

The Removal Applicant filed for removal under section 92(4)(b), which 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)…
(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.
An application under s 92(4)(b) may not be made before a period of three years has passed from the filing date of the application for registration of the Trade Mark.[12] I note that three years since filing the application for registration of the Trade Mark had passed at the time of the removal application.
[12] Section 93(2) applies to trade marks filed from 24 February 2019 onwards. See: Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3.
The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time within the three-year period ending on the 13 December 2022 (‘Relevant Period’).
The Removal Opponent bears the onus of rebutting the allegation made under section 92(4)(b) of the Act.[13] The standard of proof is the ordinary civil standard based on the balance of probabilities.[14] The Removal Opponent may rebut the allegation by establishing that:

The Trade Mark was used in good faith by the Removal Opponent in relation to the Registered Goods and Services during the Relevant Period;[15] or
The Trade Mark was not used because of circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.[16]

Discussion and Reasons

[13] Trade Marks Act 1995 (Cth) section 100(1)(c).

[14] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[15] Ibid s100(3)(a).

[16] Ibid s100(3)(c).

Use of the Trade Mark during the Relevant Period

The first issue to be determined is whether there has been use of the Trade Mark by the registered owner, or an authorised user, in good faith in relation to the Registered Goods and Services during the Relevant Period.
The use required is ‘use as a trade mark’. This is use of the sign as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between the goods and/or services and the person who applies the trade mark to the goods and/or services.[17] This may include an offer or advertisement to supply the relevant goods or services by reference to the trade mark,[18] a commercial dealing in relation to the goods or services by reference to the trade mark, or preparatory steps combined with an existing offer to supply goods or services.[19]
[17]Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ); Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[18] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2) [1984] HCA 73, [23] (Gibbs CJ, Mason, Wilson, Deane and Dawson JJ).
[19] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).
The fewer acts of use relied on the more convincingly they need to be established.[20] Where the removal opponent relies on one, or only a few, instances of alleged use, those instances should be established by ‘if not conclusive proof, then overwhelmingly convincing proof’.[21]
[20] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[21] Ibid.
The Removal Opponent relies on a limited sample of evidence, namely asserted:

Use of the Trade Mark on the WiseList website;
Use of the domain name (‘Domain Name’), which redirects users to the WiseList website; and
Use of the Trade Mark within the WiseList app.

As relevant context, the Removal Opponent emphasised that the WiseList app has been downloaded by over 180,000 users, subject to 1,300 reviews on the Apple App Store, and featured on Channel 7 news on 8 September 2023.

WiseList website and the Domain Name

Screenshots of the WiseList website show use of Trade Mark rendered in plain text, use of (‘Composite Mark’) and the use of the Compiste Mark alongside other trade marks:[22]

[22] Liu Exhibit JL-7.

I consider these examples sufficient to demonstrate use of the Trade Mark as a badge of origin in the sense that these examples indicate a connection in the course of trade between the services and the entity that has used the Trade Mark, or use of the Trade Mark with additions or alterations not substantially affecting its identity. Section 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’.
Whether a trade mark has been used with additions or alterations that substantially affect the identity of the trade mark has been interpreted to equate to an assessment of whether the alleged use of the trade mark is substantially identical to the registered trade mark.[23] The test for assessing substantial identity involves a side by side comparison between the trade marks, and a determination of whether, having regard to their similarities and differences, a total impression of similarity emerges.[24]
[23] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [256] (Yates J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ).
[24] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
I do not consider the addition of the check mark symbol to be an addition that substantially affects the identity of the Trade Mark. The essential feature of the Trade Mark is the compound word ‘WisePay’. This also forms the essential feature of the Composite Mark, whilst the check mark symbol is a far less prominent addition. When compared side by side with the Composite Mark, I am satisfied that there is a total impression of similarity.
Exhibit JL-7 of Liu also shows that this use occurred during the Relevant Period. However, I do not accept that this use is in relation to all of the Registered Goods and Services. The WiseList website describes ‘WisePay’ as a ‘payment solution’ and I am satisfied that the Removal Opponent uses the Trade Mark in a manner that constitutes use of the Trade Mark in connection with payment services. However, this is the extent of any use demonstrated by the WiseList website screenshots. I do not accept that the reference to the ‘app’ on the WiseList website indicates use of the Trade Mark in relation to software or software as a service. The references to the ‘app’ appear only to be references to the WiseList app. According to Liu, the Trade Mark is used ‘in association with the WiseList software application as a payment feature’[25]. The use demonstrated on the WiseList website is consistent with that description. The payment services appear to be used in conjunction with the software to facilitate electronic financial transactions rather than an offer to supply software or software as a service bearing the Trade Mark. I also do not consider ‘payment solutions’ or any of the other descriptions of the services featured on the WiseList website to refer to any anti-fraud or monitoring services. Similarly, I do not consider use of the Trade Mark to have been established for broader financial services, collection services or other financial services in Class 36 distinct from payment services.
[25] Liu [15].
The Removal Applicant submits that the owner of the WiseList website is not clearly identified. I note that the Removal Opponent’s evidence contains no domain registration details for the WiseList website, nor are there any other details present in the screenshots of the WiseList website that provide any indication of who the owner of the website may be.
At this point, it is convenient to address the use of the Domain Name. Exhibit JL-3 includes a copy of an invoice for the registration of the Domain Name made out to Jinjun Liu, the sole Director of the Removal Opponent dated 23 June 2021. According to Liu, the Domain Name redirects users to the WiseList website. Use of a domain name incorporating a trade mark that redirects to a website featuring the trade mark can, in certain circumstances, constitute use of a trade mark.[26] Firstly, I note that use of the wiselist.app domain name is not substantially identical to the Trade Mark and does not constitute use of the Trade Mark. However, as discussed above, the Trade Mark is featured prominently on the WiseList website. Consumers being redirected from the Domain Name would be greeted with a landing page that prominently displays the Trade Mark and comprehend that the Trade Mark is being used as a badge of origin in connection with payment services.
[26] See, for example: Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 (Perram J).
As to the question of ownership, the onus is on the Removal Opponent to demonstrate that the registered owner used the trade mark.[27] I note that the evidence of the Domain Name registration was provided by Mr Liu in his capacity as Sole Director of the Removal Opponent. This evidence shows that the Domain Name was purchased in Jinjun Liu’s name, and that it redirects to a different website that features the Trade Mark. There are two possibilities regarding the operation on the Domain Name and WiseList website. Either Jinjun Liu operates these domain names in a personal capacity, or he purchased the Domain Name in his capacity as Sole Director of the Removal Opponent, and the Removal Opponent is the operator of the WiseList website. Whilst there is some possibility of the former, I believe on the balance of probabilities that it more likely than not that the Removal Opponent operates the WiseList website.
[27] Trade Marks Act 1995 (Cth) s 100(3)(a).
The Removal Applicant submits that it is not clear the Trade Mark has been used in Australia. The Removal Opponent points to references on the WiseList website to Australian businesses, such as Coles and Woolworths.[28] These references are photos of the WiseList app showing the purchase of goods from Woolworths and Coles. I note that the references to Coles, Woolworths and Melbourne are more overt on the Removal Opponent’s undated evidence.[29] I am satisfied based on the references to Australian businesses in Exhibit JL-7 that the WiseList website is targeting Australian consumers.
[28] Liu Exhibit JL-7.
[29] Liu Exhibit JL-1.
Accordingly, on the balance of probabilities, I am satisfied that use of the Trade Mark in Australia by the Registered Opponent has been established in relation to payment services.

WiseList App

Exhibit JL-4 consists of a screenshot from the WiseList App of an order featuring the following trade mark:

As stated earlier in this decision, I consider this use to be use of the Trade Mark with additions or alterations not substantially affecting the identity of the Trade Mark. This use also appears to be in relation to payment and transactions services. However, Exhibit JL-4 is undated, and there is otherwise no evidence that this use occurred during the Relevant Period.
For completeness, I do not consider any of the communications disclosed in the WeChat logs provided in Liu to be of assistance to the Removal Opponent in demonstrating use of the Trade Mark.
For these reasons, on the balance of probabilities, I am satisfied that the Removal Opponent has used the Trade Mark within the Relevant Period in relation to payment services in Class 36, namely:
Class 36: Computerised transfer of funds; Conducting of financial transactions; Electronic funds transfer services; Monetary exchange; Monetary transaction services; Monetary transfer; Electronic payment services; Financial payment services; Payment of bills and accounts for others; Payment processing services; Payment transaction card services; Processing of debit card payments; Processing of payments for banks

However, I am not satisfied that the Removal Opponent has used the Trade Mark in relation to the remainder of the Registered Goods and Services. As the Removal Opponent has not raised any circumstances that were an obstacle to the use of the Trade Mark, I will now consider whether it is appropriate to exercise discretion to allow the Trade Mark to remain registered for the remainder of the Registered Goods and Services.

Discretion

Section 101 relevantly provides:
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
The Removal Opponent bears the onus of satisfying me that that the discretion under s 101(3) ought to be exercised.[30] In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[31] the Full Court summarised the considerations relevant to the exercise of the Registrar’s discretion:
[30] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
[31] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

whether there has been abandonment of the trade mark;
whether the registered proprietor of the mark still has a residual reputation in the mark;
whether there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
whether the applicant for removal had entered the market in knowledge of the registered mark;
the registered proprietors were aware of the applicant’s sales under the mark;
whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[32]
[32] Ibid [153].

The Opponent contends that there is a clear case for the exercise of the discretion on the basis that:

The Removal Opponent has been using the Trade Mark or a Trade Mark with additions or alterations not substantially affecting the identity of the Trade Mark since 2021 and it cannot be said that the Removal Opponent has abandoned the Trade Mark;
In the context of the popularity of the WiseList app and the ongoing use of the app by the Removal Opponent, any use of a deceptively similar or substantially identical trade mark will likely result in confusion; and
The Removal Applicant has no legitimate interest in the removal of the Trade Mark as there is no evidence it has used its trade marks in Australia, and any future entry into the market will be with knowledge of the Trade Mark.

The Removal Opponent also submits that it is inappropriate to draw fine distinctions between which goods and services ought to be removed and which remain specified in the registered Trade Mark.[33]
[33] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [498] (Dodds-Streeton J).
Conversely, the Removal Applicant contends that it unclear what specific detriment the Removal Opponent would suffer from the removal of the Trade Mark as the majority of the Removal Opponent’s evidence goes towards use of the WiseList trade mark rather than WisePay. Further, the Removal Applicant submits that there is no residual reputation in the Trade Mark, which would suggest it is appropriate for the Trade Mark to remain on the Register.
There is insufficient evidence to support the Removal Opponent’s contention that it has been using the Trade Mark since 2021, in connection with both software, monitoring systems or financial services other than payment services. I refer to my earlier discussion regarding the scope of the alleged use of the Trade Mark and the absence of any clear use of the Trade Mark in relation to the remaining Registered Goods and Services.
I am also not persuaded that I am drawing a fine distinction between services associated with financial payments and the remaining Registered Goods and Services. Although I acknowledge that payment systems interact with software and technology used to process payments, and that financial monitoring services and other financial services such as collection services and actuarial services can be characterised as financial services, they are all clearly distinct goods and services. The Removal Opponent’s evidence does not demonstrate any intention to use the Trade Mark in connection with these goods and services. Furthermore, it is in the public interest to ensure that trade marks are not maintained on the register for goods and services where there is no intention of actual use.
I also do not consider there to be any persuasive evidence of a reputation in the WiseList trade mark. The contention that any reputation may exist in relation to the WiseList trade mark is based solely on assertions in Liu regarding the number of users of the app. There is no evidence of revenue or advertising expenditure that would indicate that the WiseList trade mark has any reputation in Australia, nor is there any evidence of a residual reputation in the Trade Mark. Consequently, I do not consider the removal of the Trade Mark likely to cause any significant detriment to consumers.
Despite the Removal Opponent’s contentions to the contrary, the Removal Applicant’s interests in removing the Trade Mark are obvious. The Removal Applicant is the owner of a range of trade marks made in connection with financial goods and services that incorporate the element wise,[34] including pending trade mark applications numbers 2098556 and 2176471.[35] I consider the private interests of the parties relatively balanced.
[34] See, for example: trade mark number 2236814.
[35] See: Annexure A.
Finally, I note that there is a public interest in maintaining the integrity of the Register, which necessitates the removal of unused trade marks.
Considering all of the above, I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the Trade Mark to remain registered for the remaining Registered Goods and Services.

Decision

The Removal Opponent has established its opposition to the removal of the trade mark 1999009 in respect of the following services in Class 36:
Class 36: Computerised transfer of funds; Conducting of financial transactions; Electronic funds transfer services; Monetary exchange; Monetary transaction services; Monetary transfer; Electronic payment services; Financial payment services; Payment of bills and accounts for others; Payment processing services; Payment transaction card services; Processing of debit card payments; Processing of payments for banks
I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the Registered Goods and Services to remain unamended. Accordingly, I direct that, one month from the date of this decision, trade mark registration number 1999009 be amended as follows:
Class 9: Computer programs for financial management; Computer programs for financial reporting; Computer programs for use in processing data relating to financial records; Computer programs relating to financial matters; Computer programs, downloadable; Computer programs, recorded; Computer software; Computer software (programs); Computer software (recorded); Computer software applications (downloadable); Computer software downloaded from the internet; Computer software for business purposes; Computer software platforms, recorded or downloadable; Computer software products; Computer software programs; Computer software programs for database management; Computer terminals for use with credit cards at point of sale; Computer terminals for use with debit cards at point of sale; Computer terminals for use with encoded cards at point of sale; Computer terminals for use with magnetic cards at point of sale; Machines for executing remote financial transactions; Electronic funds transfer machines; Apparatus for payment with magnetically encoded cards; Apparatus for payment with magnetically memory cards; Machine readable devices for cashless payment systems; Magnetic payment cards; Payment cards being magnetically encoded; Terminals for electronically processing credit card payments; Terminals for the electronic payment of charges with credit cards
Class 36: ~~Computerised financial services~~; Computerised transfer of funds; ~~Actuarial services relating to financial transactions;~~ Conducting of financial transactions; Electronic funds transfer services; Monetary exchange; Monetary transaction services; Monetary transfer; ~~Organisation of monetary collections;~~ ~~Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Collection of fees, payments or tolls (for others); Collection of payments;~~ Electronic payment services; ~~Financial management of reimbursement payments for others;~~ Financial payment services; Payment of bills and accounts for others; Payment processing services; Payment transaction card services; Processing of debit card payments; Processing of payments for banks
Class 42: Electronic monitoring of financial transactions and activities to detect suspicious, fraudulent or unlawful transactions and activities; Hosting of software as a service (SaaS); Software as a service (SaaS); Electronic monetary and financial transaction monitoring
Should the Registrar be served with a notice of appeal before the removal of the Registered Mark, I direct that the amendment of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the removal application be in accordance with the Court’s orders or direction.

Costs

Both parties sought an award of costs. As both parties had a degree of success, I decline to award costs in this matter.

Timothy Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

22 July 2025

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Citations

Opposition by WISELIST PTY LTD to application under section 92 of the [2025] ATMO 143

Cases Citing This Decision

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Cases Cited

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Statutory Material Cited

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Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8

The Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721

Oakley Inc v Franchise China Pty Ltd [2003] FCA 105