Sunpab Health Products Pty Ltd v I.E. Medica Inc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by I.E. Medica Inc. to application under section 92 of the Trade Marks Act 1995 (Cth) by Sunpab Health Products Pty Ltd to remove trade mark number 2074892 (class 5) - MUM-2-B-GOLD (word) - in the name of I.E. Medica Inc.

Delegate:

Benjamin Goldsworthy

Representation:

Removal Opponent: Phillip Orth of Wynnes Patent and Trade Mark Attorneys Pty Ltd

Removal Applicant: Andrew Fox Senior Counsel instructed by Bradley Campbell of Fox & Staniland

Decision:

2025 ATMO 90

Trade Marks Act 1995 (Cth) – application under s 92(4)(a) – statutory declaration from Trade Mark Attorney of the Removal Opponent and exhibits – no use by the owner or authorised user shown in the evidence – no intention to use shown in the evidence – 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] for removal of a trade mark on the Australian Register of Trade Marks (‘Register’) for non-use. The application for removal is made in relation to all the goods for which the trade mark is registered. I extract the details of the trade mark below:
Owner: I.E. Medica Inc. (‘Removal Opponent’)
Trade mark number: 2074892
Filing date: 11 March 2020
Entered on Register: 23 February 2021
Trade mark: MUM-2-B-GOLD (‘Trade Mark’)
Goods: Class 5: Dietary food supplements; Dietary nutritional supplements; Dietary supplements; Dietary supplements for infants; Food supplements (dietary supplements); Food supplements for medical purposes; Foodstuffs for babies; Foodstuffs for infants; Medicated additives for foods; Medicated food additives; Medicated food supplements; Medicated supplements for food; Medicated supplements for foodstuffs for human consumption; Medicinal food supplements; Multivitamins; Nutriments; Nutriments for babies; Nutritional supplements; Pharmaceutical preparations; Pharmaceutical products; Supplements (trace element) for foodstuffs for human consumption; Vitamin preparations; Vitamin preparations for human consumption; Vitamin preparations in the nature of food supplements; Vitamin supplements; Vitamin supplements for foodstuffs for human consumption; Vitamin supplements for use by lactating women; Vitamin supplements for use by pregnant women; Vitamins (‘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).
An application for removal of the Trade Mark was filed on 27 September 2023 by Sunpab Health Products Pty Ltd (‘Removal Applicant’). The Removal Opponent, filed a Notice of Opposition to the application for removal on 14 November 2023, followed by a Statement of Grounds and Particulars on 4 December 2023. On 19 December 2023, the Removal Applicant filed its Notice of Intention to defend the application for removal.
The Evidence in Support (‘EIS’) in this matter consists of a statutory declaration of Phillip Orth, Registered Patent and Trade Mark Attorney at Wynnes Patent & Trade Mark Attorneys Pty Ltd, dated 21 March 2024 (‘Orth’) with Exhibits PSO-1 to PSO-4. The Removal Applicant did not file any Evidence in Answer.
On 28 May 2024, the Removal Applicant requested to be heard. On 3 February 2025, the Removal Opponent requested to be heard.
The Removal Opponent filed its written summary of submissions on 6 February 2025. On 13 February 2025, the Removal Applicant filed its written summary of submissions. On 20 February 2025, I heard the matter by teleconference. Phillip Orth from Wynnes Patent & Trade Mark Attorneys Pty Ltd appeared on behalf of the Removal Opponent. Andrew Fox, Senior Counsel, instructed by Bradley Campbell of Fox & Staniland appeared on behalf of the Removal Opponent. I am to decide the matter as a delegate of the Registrar of Trade Marks (‘Registrar’).
EIS
Orth states a belief that the Removal Opponent (also the registered owner) has used the Trade Mark for the Registered Goods. Several other statements of belief are also made throughout Orth.
Orth mentions two other entities, being Medethix Inc. (‘MedEthix’) and I-Care Formulations (‘I-Care’) stating:
I note that I.E. Medica Inc. and Medethix Inc. are related entities, Medethix Inc. is the Pharma division of I.E. Medica Inc, and has the same owners as I.E. Medica Inc.
I note that I-Care Formulation is the Australian entity which is responsible for the manufacture of products in Australia. I-Care Formulation has a working relationship with both I.E. Medica Inc. and Medethix Inc.
I.E. Medica Inc. and Medethix Inc. are in the business of selling prenatal and pregnancy dietary supplements branded MUM-2-B-GOLD in the Philippines. These supplements are manufactured in Australia and supplied by I-Care Formulations to Medethix Inc.[2]
[2] Orth, [7]-[9].
Exhibit PSO-1 to Orth is a copy of an application filed on 10 October 2018 in the name of the Removal Opponent for the Trade Mark in the Republic of the Philippines (‘Philippines’) in respect of finished pharmaceutical products (dietary supplements).
Exhibit PSO-2 is a copy of a certificate of product registration with the Food and Drug Administration (‘FDA’) in the Philippines showing the brand name as MUM-2-B-GOLD, issued on 14 April 2023, also in the name of the MedEthix.
Exhibit PSO-3 is a copy of an email dated 18 July 2023 attaching photographs of a box, an example of which I extract below:
Exhibit PSO-4 consists of a copy of a purchase order from MedEthix with an address in the Phillippines (‘Purchase Order’). The product listed is ‘Vitamins+Minierals with Omega 3 (DHA) Soft Gel Capsule’ with the brand name specified as MUM-2-B-Gold. The Supplier is listed as I-CARE, with an address in Sydney, NSW. The Purchase Order is dated 2 June 2023. Orth declares that, ‘I note that the purchase order referred to above was subsequently fulfilled’.[3] However, nothing in the evidence corroborates this statement.
[3] Orth, [16].
I note also that at the hearing the Trade Mark Attorney for the Removal Opponent made several uncorroborated statements as to facts which were not filed as part of the EIS. None of the statements, including one that the parties had at one point in time commercial relations of some kind, are reflected in any of the evidence, nor do they change the outcome here and I give no weight to those statements in deciding this matter and rely on the EIS.
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…
Section 228 further provides:
228 Use of trade mark for export trade
(1) If:
(a) a trade mark is applied in Australia:
(i) to, or in relation to goods that are to be exported from Australia (export goods); or
(ii) in relation to services that are to be exported from Australia (export services); or
(b) any other act is done in Australia to export goods or export services which, if done in relation to goods or services to be dealt with or provided in the course of trade in Australia, would constitute a use of the trade mark in Australia;
the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services.
Note: For applied to or in relation to goods and applied in relation to services see section 9.
(2) Subsection (1) applies to an act done before 1 January 1996 as it applies to an act done on or after that day, but it does not affect:
(a) a decision of a court made before that day; or
(b) the determination of an appeal from such a decision.
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) here 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). I also note that by way of s 228 an intention to export goods to which the Trade Mark is to be applied or use in relation to those goods, would amount to an intention to use the Trade Mark in Australia.
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 two 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.[4]
[4] 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 establishing the matters listed in numbers (i) to (v) to s 92(4)(a) will cause the opposition to the application to succeed. That there are a number of Exhibits in evidence which may show the use of the Trade Mark per se does not appear to be an issue between the parties. Rather, the main controversy in these proceedings has been whether it was the Removal Opponent itself who used the Trade Mark, held the requisite intention to use the Trade Marks, or otherwise authorised the use of the Trade Mark.
At the hearing the Trade Mark Attorney for the Removal Opponent acknowledged that the statutory onus begins with the Removal Opponent. However, they submitted that there is sufficient evidence to shift the onus to the Removal Applicant in these proceedings. They also submitted that the written summary of submissions of the Removal Applicant mischaracterised the onus. The Removal Opponent’s Trade Mark Attorney also questions the Removal Applicant’s approach of critiquing each and every aspect of the evidence of the Removal Opponent.
I read the Removal Applicant’s written summary of submissions as being that 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. I proceed with my analysis in that respect.
Use by the registered owner or an authorised user
Use by the registered owner?
What appears at its highest by the Purchase Order is that I-Care has exported, before the Relevant Period, goods being vitamins to MedEthix. This action appears to qualify as an export use of the Trade Mark under s 228 of the Act. However, MedEthix and the Removal Opponent (as the registered owner) are not the same legal entity. There is no information about I-Care before me other than it is said in Orth to be the manufacturer and supplier and that there appears to have been what is described in Orth as ‘a working relationship’. The undated examples of packaging in Orth mention MedEthix as the ‘importer and distributor’ and I-Care as the ‘manufacturer’. There is no mention of the Removal Opponent. This evidence of itself does not establish use of the Trade Mark by the Removal Opponent.
I note the statements in Orth that ‘I.E. Medica Inc and Medethix Inc. are related entities’ and that they have the same owners. I have noted also that the addresses for the Removal Opponent and MedEthix appearing in some of the documents in evidence are in similar locations. However, there is nothing which corroborates and elaborates on the relationship. Regardless, I have no information about what specifically is meant by the entities having the same owners or that they are related entities. Accordingly, I do not assume any type of relationship that IE Medica and MedEthix might have without more information or evidence.
In Ion Asset Management Ltd v Ion Trading UK Limited the delegate noted:
… Where an opponent has used a trade mark within a relevant period it is generally a relatively simple matter to provide such evidence: the requirements of this evidence are not onerous. However, the evidence does need to go beyond bald statements regarding use. Whether the statements are made by an attorney on their knowledge and belief, or whether they are made by other appropriate persons. The statements need to be supported by relevant evidence. Such evidence is typically examples of use of the trade mark.[5]
[5] [2015] ATMO 124, [61] (Hearing Officer H Wilson). See also, [62].
The statements of use made by the Removal Opponent’s Trade Mark Attorney in Orth are generally statements of belief and not statements as to facts. Regardless, the additional evidence does little to assist in evidencing use of the Trade Mark by the registered owner or in corroborating the statements of the Trade Mark Attorney.
I am not satisfied that to the extent there is any use of the Trade Mark shown in the evidence, that use has been by the Removal Opponent.
Use by an authorised user?
For the use of the Trade Mark by persons other than the registered owner to be relevant, such as the potential use by MedEthix or by I-Care, it must have been a use by an authorised user.[6] The Removal Opponent bears the onus to show that such use was an authorised use.[7]
[6] Sections 100(2)(c) and 7(3). See also, Note 1 to s 100(2).
[7] Section 100.
Section 8 provides:
(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).
Use of the Trade Mark will only be taken to be use by an authorised user if the registered owner is shown to have exercised control over the other person’s 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 owner.[8] This will be a question of fact and degree.[9] Control by the registered owner for present purposes can be the exercise of quality control, financial control or some other relevant form of control over use of the Trade Mark.[10]
[8] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, [183] (Katzmann J) (‘Lodestar’).
[9] Ibid [98] (Besanko J).
[10] Lodestar (n 8) [3], [184]-[185] (Besanko J).
Control for these purposes is sometimes established by evidence of an agreement between persons, such as a contractual or other license agreement. Such material is not before me. Another relevant aspect of control relates to where a unity of purpose and common directorship can, in certain circumstances, be sufficient to establish relevant control.[11] However, evidence of common directorship, indicative of such unity usually is necessary.
[11] Trident Seafoods Corp v Trident Foods P/L [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).
Orth declares that ‘[I-Care] is the Australian entity which is responsible for the manufacture of the product in Australia. I-Care has a working relationship with both IE Medica Inc and Medethix Inc.’ Whilst the export of goods can amount to the use of a trade mark in Australia,[12] the issue here is whether the Removal Opponent on the evidence has demonstrated effective control of the entity that exported goods under the Trade Mark.
[12] Section 228.
It is not enough to simply state that two entities are ‘related’, ‘have a working relationship’ or have the same owners. What is required is corroborating evidence of control. Little information about the ‘working relationship’ and any characteristics of control are mentioned in Orth. I-Care is apparently the manufacturer of the goods in Australia and yet there is no evidence of any quality control that is exercised by the Removal Opponent. The FDA documentation does not suffice in this respect. Furthermore, the Purchase Order apparently was issued by MedEthix. The only information about MedEthix is that it is said to be a related company and owned by the same persons as the Removal Opponent.
I also note that that whilst Orth states that the declarant made the declaration based on information and documentation which they believe to be true and correct, no detail is provided about the nature of that information and documentation. This extends to any information about effective control. The declarant, as the Trade Mark Attorney for the Removal Opponent, would not necessarily have first-hand knowledge of the material particulars in question. What level of access that the declarant might have to relevant documents is also not clear to me.
The evidence provides insufficient detail about any relevant control, whether by a unity of purpose or otherwise. It follows that, absent corroborating evidence of any relationship between the entities other than bald assertions, I cannot find that there was quality, financial or other relevant control by the Removal Opponent over any apparent authorised use of the Trade Mark by either MedEthix or I-Care.

I am not satisfied that any of these other persons are an authorised user as contemplated under s 8.
Accordingly, the use of the Trade Mark as appearing in the Purchase Order or otherwise mentioned in the evidence does assist the Removal Opponent in establishing the registered owner’s use of, or authorised use of the Trade Mark.
Intention to use or authorise use of the Trade Mark
I firstly note that there is no evidence that would suggest 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). Accordingly, I turn to consider ss 92(4)(a)(i) and (ii).
Though the onus is, as framed by the terms of s 100, on the Removal Opponent in this matter, that onus is 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..[13]
[13] [1960] HCA 47, [21].
The delegate in Structureco Inc v Starite Distributors Pty Ltd (‘Structureco’) 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.[14]
[14] [2000] ATMO 31 (Hearing Officer Forno).
Often, though not always, the evidence of a removal opponent will make a prima facie case that there was an intention to use the trade mark by way of a declaration of an owner or one of its officers attesting to that intention.[15] At times 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 does not go so far. It refers to a belief and/or opinion of the Trade Mark Attorney, for example, stating that, ‘I believe that the evidence referred to… is sufficient to show that there was an intention to use the trade mark and that there has been actual use of the trade mark…’. This is not a direct statement as to the fact of a genuine intention held by the Removal Opponent to use the Trade Mark in Australia at the time of filing the application for the Trade Mark. Such statements rise no higher than a statement of belief/and or opinion, based on a few commercial documents. An officer of the Removal Opponent, or its Trade Mark Attorney, does not here, for example, go as far as at least stating outright, ‘the applicant for the trade mark intended to the use the Trade Mark at the time of filling the application for the Trade Mark’.
[15] 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).
Rather, the EIS compounds the uncertainty about whether the Removal Opponent intended to use the Trade Mark as at the filing date of the application for the Trade Mark. It does this by showing potential use of the Trade Mark by other persons without establishing through documentary evidence the nature of the relationship with those entities. The Removal Opponent’s own evidence tends to also be evidence that the Removal Opponent lacked the requisite intention. This evidence is also combined with the fact that the Removal Opponent has elected to file a declaration of belief from its Trade Mark Attorney. There are serious issues with this overall approach. There is perhaps no better person placed to speak of the intentions of a registered owner of a trade mark than the owner themself, or in the case of an incorporated entity, one its officers. To the extent that belief in the intention expressed in Orth may be based on the Exhibits to the Orth, I do not accept that intention evidence assists. Most Exhibits to Orth do not appear to even mention the Removal Opponent. Furthermore, there are otherwise only general statements from the Trade Mark Attorney in Orth. In the absence of evidence which otherwise establishes the requisite matters to prevail in the opposition, I also note that there is no explanation for why a direct statement from an officer of the Removal Opponent has not been forthcoming.
At the hearing the Trade Mark Attorney for the Removal Opponent submitted that it would have been easy for the Removal Applicant to submit evidence that demonstrates there is no link between the entities, if there was no link. However, it is the Removal Opponent who bears the statutory onus here, even if it need only be a prima facie case to begin with. Moreover, such an argument by the Removal Opponent assumes that a prima facie case has been made when considering the SGP and EIS, which would include a case as to the various entities mentioned as having a relevant link. Inversely it would have been simple for the Removal Opponent to have provided documentation, such as a declaration from one of its officers, expressing its intention to use the Trade Mark, and/or otherwise commercial documentation which establishes the links between the various legal persons referenced in the evidence. As already mentioned, it is difficult to even speculate about any unity of purpose or relevant control solely on the basis of statements by the Trade Mark Attorney and such basic Exhibits.
At the hearing the Trade Mark Attorney for the Removal Opponent strenuously emphasised the FDA application and approval in the Philippines. This evidence rises no higher than an intention for use to take place in that country[16] and, perhaps, alongside the other evidence, confirming that a person other than the Removal Opponent exported the goods with the Trade Mark to the Philippines from Australia. This evidence on one reading contradicts that there was an intention held by the Removal Opponent by suggesting there is use of the Trade Mark by persons other than the Removal Opponent.
[16] Bunter v Hobarama LLC [2005] ATMO 49, [8] (Hearing Officer Williams).
My findings regarding authorised use also apply in relation to s 92(4)(a)(ii) where it refers to an intention to authorise use of the Trade Mark. I am not, for example, satisfied that the Removal Opponent had an intention to authorise use of the Trade Mark.
On the 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.
Conclusion
For the reasons set out above, the Removal Opponent has not demonstrated that it, 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 it 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
Section 101(3) provides me with a broad discretion to not remove the Trade Mark from the Register even where the ground under s 92(4)(a) has 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 (‘PDP Capital’) 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).
There is little information or evidence addressing the factors mentioned by the Court in PDD Capital. I am also conscious of the public interest in the Register reflecting what is being used by traders. At most there is evidence of use on an unspecified scale of export activities to the Philippines. However, the volume of any trade is not in evidence. I also am not satisfied that confusion would likely follow if I was to refuse to exercise the discretion. As already mentioned, there is little detail about the relationship between all of the entities mentioned throughout the evidence.
Balancing the relevant considerations insofar as they are addressed in 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 established the requisite intention to the use the Trade Mark or authorise use of the Trade Mark as at the filing date of the application for the Trade Mark. Nor has the Removal Opponent established that it used, or authorised use of, the Trade Mark before the Relevant Period. I have not been satisfied that it is appropriate to exercise the discretion to allow the Trade Mark to remain on the Register. As such, the Trade Mark should be removed from the Register.
Noting the appeal period, the removal of the Trade Mark shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then, Trade Mark shall be not be removed until the appeal has either been discontinued or the application for removal has been otherwise dealt with as the Court sees fit.
Costs
Ordinarily costs will follow the event. I see no reason to depart with that principle and award costs against the Removal Opponent in accordance with Schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
22 May 2025

[2025] ATMO 90

11 March 2020