Wollemi Capital Pty Ltd v Wollemi Capital Group Pty Ltd

[2025] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Wollemi Capital Pty Ltd to registration of trade mark application 2275829 (35) – WOLLEMI CAPITAL GROUP (Figurative) – in the name of Wollemi Capital Group Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Tony Bannon SC and Rob Clark of Counsel, instructed by Herbert Smith Freehills Applicant: Ed Heerey SC and Rebecca De Stoop of Counsel, instructed by Arnold Bloch Leiber
Decision:	2025 ATMO 69 Trade Marks Act 1995 (Cth) - section 52 opposition: s 59 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Wollemi Capital Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Wollemi Capital Group Pty Ltd (‘Applicant’): 

Application Number:	2275829
Filing Date[1]:	9 June 2022
Services:	Class 35: promotion of social justice and welfare including the establishment of charitable foundations and advisory charitable and philanthropic activities including advisory services for provision of sponsorship, grants and scholarships in the arts, culture, humanities, aid projects, education, science and technology (‘Applicant’s Services’)
Trade Mark:	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. For completeness I note that the parties to this opposition are also the parties in a related matter in which the present Applicant unsuccessfully opposed the registration of Trade Mark Nos. 2226692 for WOLLEMI and 2234287 for WOLLEMI CAPITAL by the Opponent.  These are the marks the Opponent particularises for the purposes of the s 44 ground. The decision in that matter, Wollemi Capital Group Pty Ltd v Wollemi Capital Pty Ltd [2024] ATMO 107 (Hearing Officer Makrigiorgos) (‘Earlier decision’) is currently on appeal in the Federal Court.

3. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 21 April 2023.  The SGP raised grounds of opposition under ss 42(b), 44, 59 and 60.  The Applicant filed a Notice of Intention to Defend on 4 July 2023. 

   Evidence

4. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Timothy Cameron Bishop, Co-founder and CEO of the Opponent (‘Bishop 1’)	10 October 2023	TB-1 to TB-46
Renee Elizabeth Burgess, solicitor with Herbert Smith Freehills, the Opponent’s representative (‘Burgess declaration’)	2 October 2023	REB-1 to REB-13
Evidence in answer
Robyn Denholm, Director and Company Secretary of the Applicant (‘Denholm declaration’)	17 January 2024	RD-1 to RD-20
Evidence in reply
Timothy Cameron Bishop (‘Bishop 2’)	22 March 2024	TB-1 to TB-24

1. The Denholm declaration, at Exhibit RD-1, incorporates the evidence provided by Ms Denholm relating to the Earlier decision.  When I refer to material in the Denholm declaration I also make reference to those declarations.

2. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 19 April 2024 the Opponent requested a hearing by video-conference.  The matter was set down for a hearing on 4 March 2025 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 23 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 18 February 2025 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 25 February 2025 (‘Applicant’s Submissions’).  At the hearing Ed Heerey SC and Rebecca De Stoop of Counsel represented the Applicant instructed by Arnold Bloch Lieber and Tony Bannon SC and Rob Clark represented the Opponent, instructed by Herbert Smith Freehills.

3. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

4. The Opponent is an Australian company, incorporated on 5 November 2021, that operates as a global climate specialist investment firm.  

5. The Opponent is the applicant for the trade marks listed below which are the subject of the Earlier decision (and predate the relevant date) (‘Opponent’s Trade Marks’).  The services covered by the applications of the Opponent’s Trade Marks are collectively referred to as the ‘Opponent’s Services’. 

Number	Trade Mark	Priority Date	Goods or Services
2226692	WOLLEMI	16 Nov 2021	Class 36: Venture capital financing; Venture capital fund management; Venture capital management; Capital fund investment; Investment fund management; Investment management of funds; Investment of funds; Financial investment fund services; Financial investment; Financial asset management; Financial fund management; Financial investment management services; Financial management; Financial management of funds; Financial management of capital investment funds; Financial management of investments; Financial portfolio management; Financial research; Financing of investments; Monitoring of investment funds; Provision of funds; Provision of investment capital; Provision of investment services; Raising of capital; Trading of emission reduction credits; none of the aforementioned being financial planning, superannuation planning, risk management and insurance, retirement advisory and aged care advisory services
2234287	WOLLEMI CAPITAL	9 Dec 2021	Class 36: Venture capital financing; Venture capital fund management; Venture capital management; Capital fund investment; Investment fund management; Investment management of funds; Investment of funds; Financial investment fund services; Financial investment; Financial asset management; Financial fund management; Financial investment management services; Financial management; Financial management of funds; Financial management of capital investment funds; Financial management of investments; Financial portfolio management; Financial research; Financing of investments; Monitoring of investment funds; Provision of funds; Provision of investment capital; Raising of capital; Trading of emission reduction credits; none of the aforementioned being financial planning, superannuation planning, risk management and insurance, retirement advisory and aged care advisory services

1. The relevant claims/statements in the Bishop declarations can be summarised as follows:

   ·     Since its founding in 2021 the Opponent has engaged in extensive capital fundraising, partnership development, branding, and considering potential investments.  As of the date of Bishop 1 it has approximately 22 team members.  Since its founding the Opponent has used the Opponent’s Trade Marks and a logo mark incorporating the word WOLLEMI to promote its services including on its website, slide decks, social media platforms, marketing materials and merchandise.

   ·     The co-founders of the Opponent also engaged in certain activities prior to incorporation to promote the reputation of the Opponent’s Trade Marks in the period of June 2021 to November 2021.

   ·     Since its founding (including prior to 9 June 2022) the Opponent has had numerous interactions with senior wealth management professionals and professional investors to build its network.  This builds on the extensive reputation the co-founders of the Opponent had developed in the industry prior to the establishment of the Opponent.

   ·     The Opponent has raised a significant amount of capital for investment purposes including a Series A raising, completed in July 2023 of $220 million.  It has significant third-party investors from around the world.

   ·     The Trade Mark was initially sought to be registered for a wide range of business administration and management services in class 35 and financial services in class 36.  Following the issue of Adverse Examination Reports by IP Australia citing, amongst other things, the Opponent’s Trade Marks, the Applicant substantially modified the Application to limit the services to a limited set of services in class 35.  On 8 February 2024 the Application was further amended to limit the specification to the Applicant’s Services.  The Applicant’s website at describes its mission as investing in businesses and ventures.

   ·     The Applicant has, prior to 5 November 2021, engaged the services of a direct investment advisor, that provides, in essence, private wealth management services for a fee.  Furthermore prior to that date, the Applicant has also made a number of investments in start-up companies and other investment funds.

   ·     The Applicant has also filed a new trade mark application for the Trade Mark (TM No. 2422375) for investing services in class 36 which were part of the original specification.

2. The exhibits to the Bishop declarations display various marketing material that use the Opponent’s Trade Marks, including on its website, social media, merchandise and signage and as part of sponsorship and other promotional arrangements and media reports.  I note that some of the promotional material and media reporting exhibited predates 9 June 2022 but most postdates this date. 

   The Applicant

3. The Applicant is an Australian company, incorporated in October 2021 as a privately funded investment office for the family of Robyn Denholm, a well-known Australian corporate executive.  

4. The relevant claims/statements in the Denholm declaration can be summarised as follows:

   ·     The Applicant engages in a number of activities including the management of private funds, venture capital investing, investment financing and charitable and philanthropic donations and activities with a key focus on investments in scientific and technology businesses that help the environment.

   ·     The deponent discussed the design of the Trade Mark on 4 November 2021 with a freelance graphic and web designer and the final design of the Trade Mark was agreed on 18 December 2021.  The Trade Mark was incorporated into the Applicant’s e-mail signature on 19 January 2022 and the Applicant’s LinkedIn page was updated on 15 February 2022.

   15.  The Applicant has used the Trade Mark in connection with various services online, in electronic communications and in connection with its charitable and philanthropic activities.  The Applicant’s use of the Trade Mark for philanthropic activities include its role as a patron of the Australian Museum and its support of the establishment of the Burra permanent exhibition space which opened in July 2022.  It also donated $100,000 to Taronga Zoo in June 2022 to support the HATCH program and the Trade Mark is displayed on the Taronga Zoo Hatch Program website as a sponsor.  In December 2022 the Applicant entered into a four-year partnership with the Great Barrier Reef foundation to provide funding, awareness and expertise.

   ·     The Applicant had engaged in various investment activities prior to 5 November 2021 including the retention of an investment advisor and investments in particular funds.

   ·     When the Applicant filed the Trade Mark it intended to use the mark in connection with financial, investment and philanthropic activities in the science, technology, environment and property sector.  In addition to its philanthropic activities, it has engaged a public relations agency to publicise its strategic vision and develop a broad communications strategy.

5. I note that much of the Denholm declaration gives evidence regarding the Applicant’s role as an investment office for the family of Robyn Denholm.  I have not summarised the above information or exhibits in any great detail as the Trade Mark is not sought to be registered for these services.   The exhibits to the Denholm declaration include various material and media reports connected to the creation of the Trade Mark as well as the Applicant’s philanthropic and investment activities. 

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 59 and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 59. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

7. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Proper Interpretation of the Applicant’s Services

8. The Trade Mark was originally sought to be registered for an extensive range of business and financial services in classes 35 and 36 as set out below:

   Class 35: Administration of business affairs; business advice and consultation including advisory services relating to business management, business organisation, international business opportunities and business planning; business account management; economic analysis for business purposes; preparation of business reports; business promotions; bookkeeping; advertising; marketing and promotions; accounting services including management accounting and preparation of accounts; payroll services including advisory services, payroll preparation and processing; tax services (business management and accountancy services) including advice and consultancy relating to preparation of tax returns, tax assessments and planning; company office secretarial services; promotion of social justice and welfare including the establishment of charitable foundations and advisory charitable and philanthropic activities including advisory services for provision of sponsorship, grants and scholarships in the arts, culture, humanities, aid projects, education, science and technology; economic analysis for business purposes

   Class 36: Financial analysis for business purposes; preparation of financial reports; investment business services including domestic and international investment; cash management trust facilities linked to bank account services including cheque, savings and credit card services; financial advisory services including financial advisory services relating to capital investment, investment funds and trusts, domestic and international investment and taxation; financial fund services including the operation, management and administration of various domestic and international investment funds; financial trust services including the operation, management and administration of various domestic and international trusts; management and administration of financial affairs including funds management, trust management, estate planning, financial planning; fund, trust and capital investment including investment in real estate, property securities, international and domestic equities, hybrid and fixed interest securities; financial advisory services for individuals, families and companies including financial planning and financial investment in the domestic and international markets; investment custody services including management and reporting of financial, investment, share and asset portfolios; management and reporting of financial assets, trusts, funds, capital and shares; advising on charitable and philanthropic activities including advisory services for the provision of sponsorship, grants and scholarships in the arts, culture, humanities, aid projects, education, science and technology; unit registry services including processing applications, withdrawals and distributions and recording of investments in investment funds or trusts; financial advice relating to the formation of companies and charitable entities; financial sponsorship including providing advisory services relating to financial sponsorship

9. Following a series of examination reports and as a consequence of the broader dispute between the parties, the specification for the Trade Mark was progressively narrowed to the Applicant’s Services.  However, in order to determine whether the grounds of opposition have been established it is necessary to understand the extent of the specification.  Below I extract paragraphs 13 and 14 of the Opponent’s Submissions which address the issue.

   13. Before considering the grounds of opposition, it is necessary to define the scope of the
   remaining proposed registered services sought in respect of the WCG Application. On its face,
   the description of the proposed registered services is confusing, and ambiguously worded.
   Wollemi Capital considers that the most sensible syntactical reading of the proposed
   registered services is as below:

   promotion of social justice and welfare including:

   (a) the establishment of charitable foundations; and

   (b) advisory [for] charitable and philanthropic activities including advisory services

   for provision of sponsorship, grants and scholarships in:

   i. the arts,

   ii. culture,

   iii. humanities,

   iv. aid projects,

   v. education,

   vi. science and technology

   14. Even once the proposed registered services are framed in a more comprehensible and
   digestible manner, an immediate problem arises, namely that “promotion of social justice and
   welfare” cannot sensibly be the description of a service. It is an end that one might seek to
   achieve by way of the provision of services of some type, but that end is not itself a service.
   For example, one may provide the service of the provision of food to the homeless. That
   service would achieve the end of promoting social justice and welfare, but it is obtuse to
   describe that service as being “promoting social justice and welfare”; the service is the
   provision of food to the homeless. To consider the phrase “promotion of social justice and
   welfare” to describe a service is entirely unclear and amorphous; one could not know whether
   what one did fell within the scope of such service or not. Further, for purposes of an
   infringement claim, it would require an analysis of whether such service did in fact achieve
   that end, which would create far too much uncertainty for other traders.

10. I entirely concur with the Opponent’s Submissions on this point.  The Applicant’s Services, as currently drafted, are unclear and vague.  The term ‘promotion of social justice’ cannot sensibly be a description of a service; the decision as to whether an activity ‘promotes social justice and welfare’ entirely rests on the value judgement of the beholder.  Other users of marks that are similar to the Trade Mark (or examiners assessing such marks for registration) should not have to make a determination as to whether their activity ‘promotes social justice and welfare’ and hence would infringe the Trade Mark.

1. The Opponent then states in paragraphs 16 to 18 of its submissions:

   16. As the Full Court has recently explained in Killer Queen, LLC v Taylor [2024] FCAFC 149:

   [57(2)] The Register is a public document that defines the scope of a statutory

   monopoly. It should be taken to be expressed in a manner that is not reasonably

   capable of being misunderstood: see Décor Corporation v Dart Industries [1988]

   FCA 682; 13 IPR 385 at 400 (per Sheppard J). In this respect it is analogous to the

   definition of an invention claimed in a patent

   …

   [59] … However, in our view, any ambiguity arising would not be resolved in favour

   of the trade mark owner. It is the obligation of the trade mark owner clearly to specify

   the goods in respect of which the mark is to be registered and thereby define the scope

   of the monopoly they claim. Where there exists a penumbra of uncertainty in the scope

   of the registration, this would not generally be resolved in favour of the trade mark

   owner…”

   17. Therefore, there remains the need to extract some meaning from the description of the
   proposed registered services so that the scope of the monopoly is properly and clearly
   confined. Wollemi Capital says that the only reasonable way to read the proposed registered
   services is to confine them to the subset of services set out in (a) and (b) in the extract in
   paragraph 13 above. Those are services which can be understood, eg services regarding the
   establishment of charitable foundations, could cover services related to structuring a charity
   and completing regulatory paperwork, such as the services Deloitte or Stellan Capital
   provided to WCG, see Prior Decision [29]-[36]. Advisory services for charitable and
   philanthropic foundations could cover advising charities in relation to what donations, grants
   or scholarships should be provided to achieve the best outcomes.

   18. This is also consistent with the scope of Class 35, in respect of which the proposed registered
   services are sought. Pursuant to Killer Queen at [60], it is permissible to have regard to class
   headings to interpret ambiguous specifications. Schedule 1 of the Trade Mark Regulations
   1995 (Cth) states that the class heading for Class 35 is “Advertising; business management,
   organisation and administration; office functions.” This narrow scope of the proposed
   registered services is consistent with the services in (a) and (b) of the extract, which would
   fall within the scope of business management and administration and organisation, but not
   consistent with some kind of broader interpretation whereby any service which promotes
   social justice and welfare is captured.

2. The Applicant does not in its written submissions, provide a usable and clear interpretation of the Applicant’s Services, other than to assert that the services for which the Opponent has used its marks, in particular, provision of funds, do not fall within the scope of the Applicant’s Services as they are class 36 services which are not for the ‘promotion of social justice and welfare’ (whatever that may be).  At the oral hearing I raised my concern with the definition of the Applicant’s Services with the Applicant and invited them to address the issue and perhaps provide some guidelines as to an interpretation of the Applicant’s Services that is, at the minimum, coherent.  The Applicant was unable to do so to my satisfaction.  In particular it stated, in answer to the concern that the specification was vague and unclear, that the Nice Classification of goods and services allows for the registration of a mark for ‘promoting public awareness in the field of social welfare’.  Not only is this not the specification sought by the Applicant, this specification is considerably less unclear; at least this specification clearly involves the provision of publicity services; while the Applicant’s Services, being ‘promotion of social justice and welfare’ are correctly identified by the Opponent as an end, not a service.  

3. Further evidencing the confusing nature of the Applicant’s Services, the Applicant then seeks to argue that many of the activities that the Applicant had engaged in, from making donations, to sponsoring organisations, to making investments in women-focused venture capital businesses, to co-owning the Sydney Kings basketball team, to investing in other companies fall, to a greater or lesser extent, within the Applicant’s Services as they provided a positive social outcome.  The fact that such a wide variety of activities could plausibly be argued to fall within the Applicant’s Services is a demonstration of the veracity of the Opponent’s Submissions on the specification; simply put the Applicant’s Services are far too vague and amorphous to be a service that a monopoly can be granted over.  It is fundamental to the purpose of the Trade Marks Register that a person can view the Register; identify a mark and determine the degree of statutory monopoly granted over the mark; a mark registered for ‘promotion of social justice and welfare including…’ does not satisfy that purpose.

4. I accept the Opponent’s Submissions at paragraphs 16-18 on how I should properly interpret the scope of the Applicant’s Services.  The Applicant has had the opportunity to draft the specification and it has chosen to do so in an essentially incoherent manner and I accept that the only way to bring coherency to a claim for ‘promotion of social justice including…’ is to read down the specification as being limited to the two claims as set out in the Opponent’s paragraph 14 above, namely ‘services relating to the establishment of charitable foundations’ and ‘advisory services for charitable and philanthropic activities’.  I assess the remaining questions based on the scope outlined above. 

   Has the Applicant provided the Applicant’s Services?

5. I must next consider what constitutes use of a trade mark in connection with the Applicant’s Services.  The principles when a trade mark has been used 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.[5]

   [5] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

6. Justice Gummow said in Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited:

   The primary function of a trade mark...is that of distinguishing the commercial origin of goods or services sold under the mark. The registered mark serves to indicate, if not the actual origin of the goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name.[6]

   [6] (1991) 30 FCR 326, [20] (emphasis added).

7. A relevant factor in this matter is that for a trade mark to be used, the trade mark owner (or licensee) must actually be offering those services to third parties under the mark.  It is a trite example but a company that advertises its own products, or administers its own business, does not provide advertising services or business administration services under the trade mark; rather its trade mark is only used in the context of the good or service it actually offers to third parties.

8. The Denholm declaration characterises the Applicant as engaging in a number of activities including the management of private funds, venture capital investing, investment financing and charitable and philanthropic donations and activities.  However, in the Earlier Decision there is an extensive discussion of the nature of the Applicant, and whether it, as essentially a private family company that is involved in investment and charitable activities for the benefit of the Denholm family, is providing services under a trade mark.  The Hearing Officer, after an extensive discussion of the meaning of the term ‘services’ reached the following conclusion:

   I agree that the Opponent is merely one of a number of privately held vehicles through which Denholm and her family acquire their wealth and in effect Denholm, the Opponent and its Related Entities are providing services to themselves and not to third parties at arms length. The Opponent and its Related Entities are providing venture capital and undertaking financial investments but I categorise these as personal and not in the course of trade or commerce[7]…

   and

   I do not believe the Opponent or its Related Entities have provided any services in the course of trade or commerce. Therefore, I am not satisfied that Denholm, her children, the Opponent or its Related Entities used the names Wollemi or Wollemi Capital in respect of the Used Services or any of the Applicant’s Services prior to 12 November 2021 or the Relevant Dates. Rather, I am satisfied that the services of providing venture capital and undertaking financial investments were not provided by Denholm, her children, the Opponent or its Related Entities to anyone in a commercial sense in trade but rather only to the Opponent in a private and personal sense.[8]

   [7] Wollemi Capital Pty Ltd v Wollemi Capital Pty Ltd [2024] ATMO 107, [106] (Hearing Officer Makrigiorgos)

   [8] Ibid, [111] (Hearing Officer Makrigiorgos)

9. I note that I am not bound by the factual conclusion reached by the Hearing Officer in the Earlier Decision.  The Applicant submits that there is different evidence before me, in particular the additional Denholm declaration that was not before the Hearing Officer in the Earlier Decision (though the Hearing Officer, in rejecting consideration of this declaration, noted that the additional material was of little or no relevance to her conclusions in that matter).  I have reviewed the material that the Hearing Officer in the Earlier Decision did not consider, and while the material does add to the factual record and includes further examples of communications in which the words ‘Wollemi Capital Group’ were used, none of this material is relevant in suggesting the conclusion reached by the Hearing Officer in the Earlier Decision, being that the Applicant is a privately held vehicle used for various purposes by the Denholm family, and not an entity providing services in trade and commerce, was incorrect.  Nor  am I satisfied that the Earlier Decision is wrong on the law and the activities engaged in by the Applicant under the Trade Mark, being those of a privately held vehicle, amounted to use of the Trade Mark for particular services in trade and commerce.  Finally, I note that while the finding in the Earlier Decision was based on evidence up to the date of first use of the Opponent’s Trade Marks, there is no evidence before me that suggests that the nature of the Applicant or its activities has shifted between 12 November 2021 and the relevant date, approximately 6 months later.

10. I have assessed the evidence to determine if there is any evidence of use of the Trade Mark, as a trade mark, for the Applicant’s Services.  In one sense my task is significantly easier than was before the Hearing Office in the Earlier Decision as I only have to consider the evidence of any use (or as discussed later, intention to use) in respect of the Applicant’s Services while the Earlier Decision considers whether the Applicant (Opponent in the Earlier Decision) had used the Trade Mark in respect of a wide variety of services.

11. The Opponent has made the somewhat inviting submission that as the term ‘promotion of social justice and welfare’ is not a service (a conclusion that I have accepted earlier in this decision), that regardless of the activities the Applicant considers fall inside that term, I should find that the Applicant has not provided ‘promotion of social justice and welfare’ and had no intention to provide such a service (an entity cannot intend to provide a non-existent service).  I do not adopt that submission and rather take the approach outlined in paragraph 17 of their submissions of reading down the Applicant’s Services into two categories namely a) services relating to the establishment of charitable foundations; and b) advisory services for charitable and philanthropic activities.

12. The evidence before me is that the Applicant has engaged in charitable and philanthropic activities.  The Applicant is a patron of the Australian Museum and has donated or been a sponsor of various events.  In December 2022 the Applicant entered into a partnership with the Great Barrier Reef foundation to provide what is characterised in paragraph 30 of the Denholm declaration as funding, awareness and expertise to the program which enables the use of drone technology to assist in the conservation and monitoring of the Great Barrier Reef.  In support of that, the Applicant annexes a LinkedIn post but no additional material such as an agreement setting out what particular services or expertise it is providing to the Great Barrier Reef foundation.

13. In reviewing this evidence, and the remainder of the Applicant’s evidence, I have been unable to find any evidence of activities that fall within the scope of the Applicant’s Services, namely services relating to establishment of charitable foundations and advisory services for charitable and philanthropic activities.  The Applicant may provide charitable donations and sponsorships, for which it receives the right to have the Trade Mark displayed, but there is no evidence before me of the Applicant, in trade and commerce under the Trade Mark, ever providing services assisting in the establishment of charitable foundations to third parties.  Nor is there any evidence that it has provided, in trade and commerce under the Trade Mark, advisory services for charitable and philanthropic activities.   

14. The Applicant has in its oral submissions made reference to part 3.5 of 19A of the Trade Marks Manual of Practice and Procedure which notes that the question of whether a mark is used in trade and commerce is more difficult for charitable organisations and that care must be taken in reaching a conclusion that a charitable organisation has not used any such mark.  In particular the Applicant refers to the decision Bravehearts Inc v Brainstorm Productions Pty Ltd, in which the delegate said:

    As a not for profit organization, the opponent provides charitable services. As it does not sell its services, or offer goods for sale for its personal profit, it is dependent on establishing a commercial reputation through exposure of its marks to the public by other means, for example, community announcements, business papers and advertising material, fund raising activities and educational material.[9]

    [9] [2009] ATMO 25 at 32

15. The Applicant has not applied to register the Trade Mark for charitable services; which are a distinct category of services; it is seeking to register the Trade Mark for services relating to the establishment of charitable foundations and advisory services for charitable and philanthropic activities.  These are services provided to entities providing charitable services and not charitable services themselves (regardless of whether they are provided on a not-for-profit basis).  Secondly the Applicant is not a charity; it does not solicit donations; rather it is a private company for carrying out various aims, including philanthropic ones, for the Denholm family.  Its activities in making charitable donations and entering into sponsorships are not use of the Trade Mark; they are simply the act of a consumer engaging in a donation or purchasing a sponsorship (a sponsorship being, in essence, a promotional activity where a party provides money for the right to associate that party with a particular entity or individual).   The Applicant is one of 16 entities whose mark is displayed in exhibit RD-18 in connection with a particular program in Taronga Zoo and one of the over 100 individuals and businesses listed as donors and partners of the Australian Museum; it is simply absurd to conclude; as the Applicant seeks that I conclude, that by donating to those two entities that each of the entities and individuals listed in those exhibits are using their particular names/marks in respect of the services said to constitute the Applicant’s Services.

16. In summary I am not satisfied that there is any evidence before me of use by the Applicant of the Trade Mark for the Applicant’s Services.  I now consider the specific grounds of opposition.

    Section 59

17. Section 59 is reproduced below:

    Section 59 - Applicant not intending to use trade mark
    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)    to use, or authorise the use of, the trade mark in Australia, or

    (b)    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 specified in the application.

18. The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 9 June 2022.[10]

    [10] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31] (Hearing Officer Kirov). The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (Dodds-Streeton J) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (Keane CJ, Stone and Jagot JJ).

19. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd where he stated:

    In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[11]

    [11] [2008] 75 IPR 478, [160].

20. There is a presumption that where an application has been filed the applicant, has the requisite intention.[12]  However:

    There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

    The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[13]

    [12] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401 (Fullagar J) (‘Aston’).

    [13] Ibid [162]-[163] (citations omitted).

21. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

    The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[14]

    [14] Ibid [161] (citations omitted).

22. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.  If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.  The relevant intention requires that an applicant must have ‘a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered’.[15] There must be ‘a real and definite intention’ to use the mark publicly as a trade mark in connection with the services applied for.[16]

    [15] Re Ducker’s Trade Mark (1928) 45 RPC 397, 402.

    [16] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [158] (Jacobson J).

1. Where the specification of goods and services in an application extends well beyond the goods or services in respect of which the applicant has previously used the mark, and the applicant has come nowhere near to launching the mark in relation to such goods or services, that is

   indicative of an approach to registration that is not aligned with genuine intention, but rather to a desire to cover a field beyond the range of expected or intended use. Such an approach diminishes the benefit of any imputation arising from the fact of registration itself in the sense contemplated in Aston.[17]

   [17] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [152] (Burley J).

2. The Opponent has particularised this ground of opposition in the SGP as follows:

   The Applicant has no genuine intention to use, or authorise the use of, the opposed Wollemi CAPITAL GROUP logo trade mark in Australia, or to assign that trade mark to a body corporate for use by the body corporate in Australia, in relation to all class 35 services specified in the Opposed Application.

   The Applicant and Opponent are party to two other oppositions before the Trade Marks Office concerning trade marks containing WOLLEMI – namely, the Applicant’s oppositions to the Opponent’s earlier trade mark application nos. 2226692 WOLLEMI in class 36 and 2234287 WOLLEMI CAPITAL in class 36 (the Opponent’s Earlier Trade Mark Applications).

   The Applicant’s website at describes the Applicant as “the Denholm family office” stating that it was “founded in 2021 with a mission to invest in businesses and ventures…”. Documents filed by the Applicant in connection with its oppositions to the Opponent’s Earlier Trade Mark Applications are consistent with this description of the Applicant. Additionally, the Applicant’s website makes no reference to any of the class 35 services specified in the Opposed Application.

   It is clear from the Applicant’s website and documents filed in connection with the Applicant’s oppositions to the Opponent’s Earlier Trade Mark Applications that the Applicant does not intend to use, authorise the use of, or assign to a body corporate for use by the body corporate, the opposed Wollemi CAPITAL GROUP logo trade mark for all of the following class 35 services covered by the Opposed Application – including because they are not services which it intends to provide to third parties:

   Class 35: business promotions; bookkeeping; advertising; marketing and promotions; payroll services including advisory services, payroll preparation and processing; company office secretarial services; promotion of social justice and welfare including the establishment of charitable foundations and advisory charitable and philanthropic activities including advisory services for provision of sponsorship, grants and scholarships in the arts, culture, humanities, aid projects, education, science and technology.

   As the Applicant lacks a bona fide intention to use the opposed Wollemi CAPITAL GROUP logo trade mark in connection with all of the applied for services, registration of the application should be refused pursuant to Section 59.

3. I am satisfied that the Opponent has provided sufficient evidence in support of this ground of opposition to shift the evidentiary onus. Specifically, it has provided detailed evidence, accepted by the Hearing Officer in the Earlier Decision, that the Applicant was not providing any of its services in a commercial sense, but only in a private and personal sense, which is not use of the Trade Mark. As such any benefit of the presumption inherent in the application that the Applicant intended to provide the Applicant’s Services is limited. A further factor telling against the Applicant is the nature of the specification; as ‘provision of social justice and welfare’ is not a service capable of being provided under the Act the benefit of any imputation is limited; I cannot assume that the Applicant intended to provide services that as drafted, are vague and unclear.

4. Given the evidence filed by the Opponent, I find that the Opponent has established a prima facie case that at the relevant date, the Applicant lacked the intention to use the Trade Mark for any of the Applicant’s Services.  The Applicant is legally represented and has clearly been put on notice, (by the provision of the SGP and the Opponent’s EIS) that lack of intention to use is an issue in these proceedings.  It is therefore necessary to consider the Applicant’s evidence that at the relevant date it intended to use the Trade Mark for the Applicant’s Services, noting that there is no evidence of actual use.  Paragraph 18 of the Denholm declaration contains the Applicant’s statement of intention provided after being placed on notice that the question of intention to use was a matter at issue. It states the following:

   When Wollemi Capital Group filed its above trade mark application, it intended to use the WCG Mark in connection with financial, investment and philanthropic activities in the science, technology, environment and property sector, with the objective of achieving positive social and community outcomes. This remains Wollemi Capital Group’s intention.  

5. The Applicant may well have intended to engage in philanthropic activities with the objective of achieving positive social and community outcomes.  Its evidence indicated that it did so.  It did not, however, engage in the Applicant’s Services, which relate to advisory services and the establishment of charitable foundations.  Neither the statement in the Denholm declaration, nor anywhere else in the Applicant’s evidence (including the various statements of purpose prepared for the Applicant and annexed at various points in the Denholm declaration) establishes that the Applicant had an intention to provide the specific services for which the Trade Mark is sought to be registered (the Applicant’s Services as opposed to general philanthropy).  

6. I find that the ground of opposition pursuant to s 59 has been established.

   Decision and Costs

7. I have found the Opponent has established the ground of opposition it raised pursuant to s 59.  As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

8. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   15 April 2025