Sato Holdings Corporation v West Affum Holdings Corporation

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sato Holdings Corporation to application under section 92 of the Trade Marks Act 1995 (Cth) by West Affum Holdings Corporation to remove trade mark number 1500473 (class 9) – PJM ASSURE – in the name of Sato Holdings Kabushiki Kaisha

Delegate:

Louise Tuohy

Representation:

Opponent: Andrew Sykes of Counsel instructed by Wrays

Applicant: Gabriella Rubagotti of Counsel instructed by Spruson & Ferguson

Decision:

2025 ATMO 73

Trade Marks Act 1995 (Cth) – application under section 92 – sections 92(4)(a) and 92(4)(b) – evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background1500473

Sato Holdings Kabushiki Kaisha is the registered owner of the following trade mark registration (‘Registration’):
Registration number:   1500473
Trade mark:  PJM ASSURE
Filing date:  5 July 2012
Specification:  Class 9
Scientific, electrical, electronic, checking (supervision), weighing, measuring, signalling apparatus and instruments; data processing equipment and computers, including display terminals and keyboards; software; RFID devices (radio frequency identification devices); printed circuit boards; integrated circuits; transponders; smart cards; automatically readable value cards; proximity monitoring equipment; surveillance equipment; commercial and military electronic equipment, inventory management software; devices, apparatus and systems for enabling the identification, tracking or tracing of items; RFID interrogators; barcode readers, parts and accessories for the aforementioned goods
(‘Registered Goods’)
On 24 February 2023 a non-use application (‘Application’) based on ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] was filed in the name of West Affum Holdings Corporation (‘Removal Applicant’). The Application is for the removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’) in respect of all the Registered Goods.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
On 5 May 2023 Sato Holdings Corporation (‘Removal Opponent’)[2] filed a Notice of Intention to Oppose the Application, followed by its Statement of Grounds and Particulars on 2 June 2023. On 10 July 2023 the Removal Applicant filed a Notice of Intention to Defend the Application.
[2] Powell [1] declares that the owner of the Trade Mark, Sato Holdings Kabushiki Kaisha, is called Sato Holdings Corporation in English.
The Removal Opponent filed the following declaration as evidence in support:
·Declaration of Christopher Powell, Managing Director of Sato Australia Pty Ltd, made on 10 October 2023, with Annexures CP-01 to CP-04 (‘Powell’).
The Removal Applicant did not file evidence in answer.
Once time for filing evidence had ended, the parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested an oral hearing. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 26 March 2025. Andrew Sykes of Counsel instructed by Philip Gehrig of Wrays appeared on behalf of the Removal Opponent. Gabriella Rubagotti of Counsel instructed by Daniel Wilson and Madeline Connolly of Spruson & Ferguson appeared on behalf of the Removal Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing.
Preliminary Issue
The Removal Opponent has sought to introduce out of time declaratory evidence as follows:
1.Declaration of Philip Walter Gehrig, Principal of Wrays for the Removal Opponent, made on 25 March 2024 with Annexures PG-01 to PG06 (‘Gehrig 1’).
The information contained in Gehrig 1 includes:
·     a commercial register extract for Sato Holdings Kabushiki Kaisha;
·     a copy of a declaration by Yoshinao Ugomori, General Manager of IP Department for the Removal Opponent, dated 8 April 2023. Ugomori states that the name Sato Holdings Corporation is used as the equivalent name for the Removal Opponent;
·     a copy of an Australian Securities and Investment Commission (‘ASIC’) historical company extract for Sato Australia Pty Ltd (‘SA’);
·     a copy of an ASIC historical company extract for Sato Vicinity Pty Ltd (‘SV’);
·     a copy of an ASIC historical company extract for Sato Healthcare Pty Ltd (‘SH’); and
·     a copy of a letter to customers from SH dated 5 December 2019.
2.Declaration of Philip Walter Gehrig, made on 3 October 2024 with Annexures PG-07 (‘Gehrig 2’).
The information contained in Gehrig 2 includes:
·     details of the registrant of the internet domain <satoasiapacific.com> and the date of registration and expiration.
(collectively the ‘Gehrig declarations’)
Gehrig 1 was filed one year before the hearing date and Gehrig 2 was filed five months before the hearing date. The Removal Opponent’s filing of the Gehrig declarations as information for the Registrar out of time, included its request that the evidence be considered under reg 21.19.
It is not the practice of this Office to consider evidence filed out of time[3] unless the Removal Opponent can make a compelling case for doing so. Typically, that would include an explanation why the evidence was not filed in keeping with the Regulations. In Fed Square Pty Ltd v Federation IP Pty Ltd the Delegate wrote:
The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.[4]
[3] Trade Marks Manual of Practice and Procedure, Part 51, Section 2.5.
[4] [2015] ATMO 42, [55] (Hearing Officer Wilson).
In the Removal Opponent’s letters and submissions to this Office, it argued that the information provided in Gehrig 1 was not made available to the Registrar earlier due to an oversight, and that the information provided in Gehrig 2 was previously not publicly available. Furthermore, the information contained in the Gehrig declarations is crucial because the information corroborates and supports the evidence provided in Powell.
In response the Removal Applicant argues that the explanations for the separate failures to file the Gehrig declarations within time are not of a nature that permit the Registrar to be satisfied of the matters set out in regs 9.18(2)(a) and (b). As such the Removal Opponent’s attempt to use reg 21.19 to avoid the requirements of reg 9.18 is thus contrary to well-established and binding authority, and the intention of the regulations as identified in Fed Square Pty Ltd v Federation IP Pty.
It is important to note that reg 21.19 and reg 9.18 have different requirements because the later relates to circumstances justifying an extension of time to file evidence. Under reg 9.18 the Registrar must be satisfied that the party ‘has made all reasonable efforts to comply with all relevant filing requirements of this part’ and has acted ‘promptly and diligently at all times to ensure the filing of the evidence within the period’, or that ‘there are exceptional circumstances that justify the extension.’ In comparison reg 21.19 is for considering out of time evidence which may be appropriate[5] in some circumstances even where an extension of time cannot be obtained.
[5] [2015] ATMO 42, [53].
In this case Gehrig declarations were filed well out of time and the Removal Opponent has given no compelling reason why I should give the factual material weight in these proceedings. As such I decline to consider the additional material filed in the Gehrig declarations. Even if I were to give weight to the evidence provided in the Gehrig declarations, they do not change the outcome of these proceedings.
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register due to non-use.
The Removal Opponent nominated grounds under ss 92(4)(a) and 92(4)(b) which 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) 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.
Given the way that s 92(4)(a) is expressed, this provision essentially merges with s 92(4)(b) once a trade mark has been registered for 5 years and I confirm that five years since filing the application have in fact passed.[6] Accordingly, it is only necessary to consider the s 92(4)(b) ground.
[6] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of the Trade Mark is the three year period ending on 24 January 2023 (‘Relevant Period’).
Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent must show on the balance of probabilities[7] that it has used the Trade Mark, or a trade mark with additions or alterations not affecting the identity of the Trade Mark in relation to the Registered Goods, in good faith in Australia within the Relevant Period.
[7] 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.
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it 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 mark’ may be enough to rebut an allegation of non-use.[9] Little weight is to be given to assertions of use which are not supported by documentary evidence.[10] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[11]
[8] [2001] FCA 261, [16].
[9] Ibid [17].
[10] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
[11] (1962) RPC 1, 7.
The principles regarding use as a trade mark were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
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.[12]
[12] (‘Self Care’) [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
In accordance with s 101, if the ground for removal is established, I may decide to remove the Trade Mark from the Register in respect of any or all of the goods identified in the Removal Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
Use of the Trade Mark during the Relevant Period
In Powell, Powell states the Removal Opponent was founded in 1940 and now operates a global business across more than 90 countries while employing over 5,000 people. The Removal Opponent specialises in “Auto-ID” solutions for a range of sectors, including healthcare, retail, manufacturing, food, and transport and logistics. Auto-ID solutions support businesses by providing traceability, asset management, and supply chain management through the act of tagging items with identifiers and tracking them.
Powell attests that the Removal Opponent promotes and markets its Auto-ID solutions internationally both online as well as through engagement of its personnel and its subsidiaries in the respective markets.
Powell states that in 2013 the Removal Opponent acquired the business of Magellan Technology Pty Ltd (‘Magellan’). Magellan was the original owner of the Trade Mark. Powell claims that in 2013 the Removal Opponent established the company Sato Vicinity Pty Ltd (‘SV’) to carry on the business acquired from Magellan.
Powell claims that in 2015 the Removal Opponent established another company Sato Healthcare Australia Pty Ltd (‘SH’) to carry on the marketing and sales activities in Australia on behalf of the Removal Opponent.
From 1 January 2020, Powell states that SH merged into another company established by the Removal Opponent named Sato Australia Pty Ltd (‘SA’). As such the Removal Opponent’s business in Australia is carried out by SA and SV. Powell claims that the Removal Opponent is the parent company and SA, SH and SV are all wholly owned subsidiaries and are authorised users of the Trade Mark.
Powell states that the Removal Opponent’s online presence includes a top-level corporate website at as well as a number of regional websites. For example, the Removal Opponent operates a website at (‘AP Website’) for the Asia Pacific region in which countries such as Australia, New Zealand, Indonesia and China are specifically covered.
Annexure CP-02 to Powell comprises screenshots from the Internet Archiving Service Wayback Machine, for the website dated 15 May 2021. The pages show use of the Trade Mark in relation to the promotion of an RFID Medical Device Loan–Kit Management Solution for Hospitals. The page does not list the package of products designed to address the management solution.
Annexure CP-01 to Powell comprises a copy of an undated ‘installation and preparation guide’ (‘guide’) published by SV for the PJM ASSURE system. Powell states that the guide is a document provided to hospital IT staff to assist in the installation or deployment of the PJM ASSURE system. The document features the Trade Mark in relation to web based application software, and a desktop version of the software for use from 1 January 2021.
Annexure CP-03 to Powell comprises copies of purchase orders from:
·SA to an Australian delivery address, dated 5 November 2021 for delivery on 3 March 2022 of PJM ASSURE Hospital Loan Kit Management Software.
·SA to an unnamed buyer dated 9 November 2022 for delivery on 1 May 2023 of PJM ASSURE Hospital Loan Kit Management Software.
·Unnamed buyer to SA dated 12 December 2022 for delivery on 4 May 2023 of PJM ASSURE Hospital Loan Kit Management Software, noting that the price includes the first year of hosting and support.
Annexure CP-04 to Powell comprises copies of four cost quotations from SA to an unnamed buyer dated between 8 to 16 November 2022 for the PJM ASSURE Hospital Loan Kit Management Software (including the first year of hosting and support) as well as installation and training services, and annual support and hosting services (after year one) under the Trade Mark.
In my assessment of the evidence before me, I consider that while the Removal Opponent states that its AP Website is direct use of the Trade Mark in relation to the Registered Goods, the evidence from the AP Website does not provide details of any products, the text only provides an overview of the PJM ASSURE RFID Medical Device Loan-Kit Management Solution and describes the PJM ASSURE system as “a medical implant tracking solution”. I note that Powell describes the components that make up the PJM ASSURE RFID Medical Device Loan-Kit Management Solution as comprising hardware components, such as the RFID tags or cards themselves, RFID readers, such as tunnel readers and desktop readers, that operate as monitoring/inventory management equipment to enable identification, tracking or tracing of medical items as well as software to operate the system via data processing equipment or computers with display terminals and keyboards, however there is no evidence that any of these products being offered for sale.
Even so, I am satisfied that the guide produced by SV is a document concerning the installation of web based application software and desktop software featuring the Trade Mark. However, I am not satisfied that the guide which itemises the suitable components needed for the technological set up of the PJM ASSURE system shows use of the Trade Mark in relation to hardware goods.
The purchase orders and quotations provided by SA show use of the Trade Mark in relation to Hospital Loan Kit Management software and web-based Hospital Loan Kit Management software. However, mention of hardware products is limited to tunnel readers which are listed under the Magellan trade mark and its product number.

Therefore, I find that SV and SA and not the Removal Opponent have used the Trade Mark in relation to software for the identification, tracking or tracing of medical items in class 9 and for non-downloadable software for the identification, tracking or tracing of medical items in class 42. I do not find that the Removal Opponent has directly used the Trade Mark on or in relation to the Registered Goods in the Relevant Period. In this regard, Note 1 to s 100 states that if the registered owner of a trade mark has authorised another person to use it, any authorised use of the trade mark by that other person is taken to be a use of the trade mark by the registered owner.
Section 8 of the Act defines an ‘authorised user’ and ‘authorised use’ as follows:
8 Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
Section 8 makes clear that use of a registered trade mark by an authorised user, will only be taken to be use by the registered proprietor of the trade mark if the registered proprietor exercises control over the use of the trade mark during the period in question so as to maintain a connection in the course of trade between the goods and the registered proprietor. That can be achieved if either quality control or financial control is exercised.[13]
[13] See Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124; Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100; and Lodestar Anstalt v Campari America LLC (No 2) [2016] FCAFC 92.
The Removal Opponent submits that SV and SA are its wholly owned subsidiaries and operated with a clear unity of purpose. The Removal Opponent advanced two arguments in support of the claim that SV and SA are and have been authorised users of the Trade Mark. Firstly, there is a unified approach to marketing the Registered Goods by reference to the Trade Mark. Secondly this promotion has resulted in sales in Australia.
This situation as described by the Removal Opponent shares elements of both Lodestar Anstalt v Campari America LLC[14] and Trident Seafoods Corp v Trident Foods Pty Ltd.[15] Lodestar involved a close reading of a licensing agreement, while Trident required looking over company governance documentation. Neither of these are provided in the present opposition.
[14] (2016) 244 FCR 557 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ) (‘Lodestar’)
[15] (2019) 369 ALR 367, 380-1 [45]-[52] (Reeves, Jagot and Rangiah JJ) (‘Trident’).
With respect to there being a unity of purpose in that there is a unified approach to marketing the Registered Goods by reference to the Trade Mark, this implies that some sort of license agreement was in place between the parties, but the terms of any such license are not in evidence, nor is there any evidence of any quality or financial control being exercised.
While the Removal Opponent submits that its owns and controls the AP Website and SV has continuously provided the guide which explains the components and technological set up of the PJM ASSURE system promoted to Australian consumers on that website, the guide produced by SV displays the following trade mark in its headline and this trade mark does not appear on the AP Website. The evidence merely shows that customers ordered goods and services or received a quotation from SA, and that SV had produced a guide to assist information technology departments with the PJM ASSURE set up. There is no evidence that any orders placed with SA were a result of customers viewing the AP Website or that the guide was provided to SA customers. Further, there is no evidence that the package of goods or services ordered from SA would be provided by the Removal Opponent.
On the Trident approach, the Removal Opponent’s submissions are that SV and SA are wholly owned subsidiaries (that is, 100% of the shares are held by the Removal Opponent). One of the features of the modern corporation is the division between the management and ownership of a business. That is the shareholders of a company do not normally manage that company directly. Instead, they have certain shareholder rights which generally include the power to appoint directors of the company. It is those directors, not the shareholders, that sit atop the management structure of the company. Trident relied on common directorship of two companies to conclude that those entities were acting with a ‘unity of purpose’.[16] The Removal Opponent has not suggested, nor demonstrated, that SV and/or SA have directors in common with the Removal Opponent. This leaves me unable to reasonably conclude that SV and/or SA operated with a unity of purpose with the Removal Opponent.[17]
[16] Ibid 380 [45].
[17] See also Star Television Products Limited v Star Entertainment Group Limited [2019] ATMO 163[19] to [21] (Hearing Officer Richards).
Therefore, I am not satisfied that the Removal Opponent or an authorised user as contemplated by the Act has used the Trade Mark during the Relevant Period in Australia in relation to the Registered Goods.
Obstacles to Use
The Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the Relevant Period, pursuant to s 100(3)(c) and in the interests of completeness I have been unable to identify any such obstacles.
As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.
Registrar’s discretion
Section 101(3) provides:
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.
The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[18]
[18] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).
In this matter, the question is whether it is reasonable not to remove the Trade Mark in respect to the Registered Goods even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[19]
[19] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).
In E & J Gallo Winery v Lion Nathan Australia Pty Ltd,[20] Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark[21] were of assistance in considering the exercise of the discretion:
·there had been no abandonment of the trade mark;
·the registered proprietors of the trade mark still had a residual reputation in the mark;
·there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
·the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and
·the registered proprietors were not aware of the applicant’s sale under the mark.
[20] [2008] FCA 934, [209].
[21] [1982] RPC 425.
The public interest and the interests of the parties are inherent in the above factors. In this regard Austin, Nichols & Co Inc v Lodestar Anstalt provided the following guidance:
The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[22]
[22] [2012] FCAFC 8, [38].
The Removal Opponent deals with the exercise of discretion in three parts. Firstly, the Removal Opponent submits that it is apparent from the evidence, as part of the PJM ASSURE system, it uses the Trade Mark in relation to computers and other technological equipment, including RFID tunnel readers. Such electronic equipment will include printed circuit boards and integrated circuit to operate. Secondly, regarding the reference to commercial and military electronic equipment, the Removal Opponent submits that these goods can be used in commercial and military settings to track inventory. Thirdly, in relation to all the Registered Goods, the Removal Opponent submits that it has provided evidence of its ongoing and significant use of the Trade Mark in Australia in the health industry. As such it would likely cause significant detriment and customer confusion if the Trade Mark were to be removed.
In response to this line of argument the Removal Applicant submits that there is no evidence of authorised use accruing to the Removal Opponent’s benefit, there is no evidence of use in relation to the Registered Goods, the Registered Goods specified in the description are very broad in nature, and finally, the Trade Mark registration stands in the way of the Removal Applicant’s pending application number 1881648 for ASSURE for a narrow class of goods in class 9 being computer hardware and software for collecting, processing, transferring and storing patient date, medical data and physiological data, and would conceivably stand in the way of third party traders wishing to seek registration of ASSURE or variants thereof in respect of niche goods in class 9 among others.
On balance, taking into account each of the above factors into consideration both individually and together, I am not persuaded that the Removal Opponent has met it burden of persuasion. The Trade Mark has been registered for over a decade and there is no evidence of any residual reputation in the Trade Mark in relation to the Registered Goods that would result in consumer confusion. As such I consider that the public interest would be served if all the Registered Goods were removed from the Register.
Decision
I direct that trade mark registration 1500473 be removed from the Register in respect of all the Registered Goods, one month from the date of this decision. In the event of an appeal, I direct that the Trade Mark will not be removed for all the Registered Goods until the appeal has been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.
Costs
Both parties sort costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
28 April 2025

[2025] ATMO 73

28 April 2025