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:

(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:

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. An application under s 92(4)(b) is subject to s 93(2), which at the time the Trade Mark was filed stipulated that such applications 'may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark'. Given that the application to register the Trade Mark was filed on 26 July 2007, this requirement is satisfied.
2. Section 96 allows for a person to oppose an application for removal by filing a notice of opposition, and s 100(1) places the onus upon an opponent to rebut an allegation of non-use. Section 100(3) provides that an opponent is taken to have rebutted the allegation of non-use if it establishes that the trade mark (without additions or alterations substantially affecting its identity) was used in good faith by the registered owner during the relevant period; or, in relation to s 92(4)(b), that there were circumstances that were an obstacle to use. Note 1 to s 100(3) allows for authorised use to be taken as use by the registered owner in accordance with s 7(3).
3. 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) bestows upon the Registrar the 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, being use of a trade mark in respect of similar goods or closely related services, or vice versa, but does not limit the matters the Registrar may take into account.
4. I proceed on the basis that the standard of proof required of the Opponent is on the balance of probabilities.[2] I note further that if the exercise of the Registrar's discretion is sought, it is for the party seeking the exercise of the discretion to positively satisfy the Registrar that it is reasonable to do so.[3]
5. Here the relevant period for the purposes of s 92(4)(b) is the three-year period ending on 11 November 2023 ('Relevant Period').

The Opponent was incorporated in Singapore on or around 10 August 2007 and has operated since that time as a manufacturer, supplier and distributor of health supplements, and various beauty, skincare and therapeutic goods.

The Opponent currently offers for sale, and sells, a range of goods under or by reference to the AVITA Trade Mark via its myavita.com website (accessible to Australian consumers) including [various goods upon which use is claimed].[4]

The Opponent has a number of arrangements in place with third parties globally for the supply and distribution of its products, including significantly in Australia, with Scent'al World. The Opponent has authorised Scent'al World's Australian branch, Scent'al Australia (based in Perth, Western Australia), to promote, and engage independent third parties to build awareness, its AVITA-branded products to Australian consumers.[5]

1. Contact details of the Opponent's Australian distributor, Scent'al Australia, are provided on the Opponent's website 'myavita.com'. Chen states that the arrangement between the Opponent and Scent'al Australia has been in place since around 10 August 2007.[6] Screenshots of the website of Scent'al World at 'scentalworld.com/wp/'[7] indicate that it is a business concerned with marketing and sales. Scent'al World appears to base its services on the marketing and sales of AVITA branded products. There are no web pages specific to Scent'al Australia or mention of Australia on the Scent'al World website.
2. The Opponent is the owner of several pending and registered trade marks across fourteen jurisdictions, primarily in Asia but including also Australia, Canada and New Zealand. These trade marks consist of either the word AVITA solus, the word avita with a small leaf image ('Device Trade Mark'), or three Chinese characters.[8]
3. As indicated in the SGP, Chen declares that the Opponent commenced using the Trade Mark in Australia in 2008 and the Trade Mark has been used in Australia since then. In support of this Chen refers to undated digital brochures and flyers[9] advertising certain beauty and wellness products. One of them makes reference to 'avita' in plain word form, the remainder either display or make reference to the Device Trade Mark. One of the brochures contains a copyright notice of 2024. Undated photographs of products, none of which bear the Trade Mark but some of which bear the Device Trade Mark, are also adduced.[10] In respect of marketing activities, Chen declares that the Opponent regularly conducts online and in person workshops, including holding its annual 'avita Voyages' trip in Melbourne in 2019. According to Chen, the purpose of the 'avita Voyages' is to engage with Australian distributors of AVITA goods, to advertise said goods to Australian consumers and build brand awareness of the Trade Mark.
4. Chen also declares that further workshops were held in Melbourne in October 2022 and December 2023. In support of the former are three images. The first is a photograph of four individuals, two of which hold the Opponent's products, one of which bears the Device Trade Mark. The photograph itself is undated, however an iPhone screen capture of the image's details indicates that the photograph was taken on 20 October 2022 at 3.40pm at a location that suggests Keysborough, a suburb in Victoria (although only 'Keysbor' is visible). There is no other context to the photograph, other than that it appears to be taken in a kitchen given a knife block appears in the corner of the photograph. Another photograph depicts a room with a small number of people and the Device Trade Mark in the bottom corner of an electronic screen next to a person appearing to speak to the group. The photograph is undated and the only reference to the subject matter of the workshop is the heading 'Immunity is our Best Doctor' which appears upon the electronic screen. No goods appear in the image.[11] In support of the latter workshop an 'event memo' is adduced which states that the event date is 1 December 2023 and attendees must register by 27 November 2023. The event appears to be a speaking event by one of the Opponent's associates, and no goods are mentioned or displayed. The Device Trade Mark is displayed at the top of the memo.
5. The Opponent's website, 'myavita.com', is declared to be accessible by and directed towards Australian consumers. A screenshot of a page from the website, accessed after the relevant period on 18 June 2024, displays a world map and directs the user to select their region and language in the Asia-Pacific region, of which Australia is one of nine options.[12] According to Chen, since July 2007 the website has advertised and/or promoted the Opponent's goods under the Trade Mark, and archived webpages are adduced which demonstrate use of the Trade Mark or the Device Trade Mark in respect of the Opponent's business and certain goods through the Relevant Period.[13] Similarly, social media posts under account names being or incorporating AVITA dated within the Relevant Period are adduced, advertising certain beauty and wellness products - two of them also providing prices in various currencies including $AUD.[14]
6. Lastly, two articles from the Khmer Times and South China Morning Post are exhibited. They are in relation to the launch of an AVITA product in Cambodia and the AVITA network marketing business in the Asia-Pacific region respectively. The first article is dated after the Relevant Period (1 April 2024) and the second article is dated within the Relevant Period (10 August 2021). Both articles mention that the Opponent operates in Australia, among other Asia-pacific countries.

1. I must first decide whether there has been use of the Trade Mark upon the goods specified in the registration during the Relevant Period. If I am so satisfied, then the Opponent will have rebutted the allegation under s 92(4)(b) and its opposition will succeed. If I am not so satisfied, then I must decide whether to exercise the discretion afforded by s 101(3) to allow the Trade Mark to remain registered for any or all of the goods.

Use of the Trade Mark During the Relevant Period

1. A single bona fide use of a trade mark during the relevant period may be sufficient to resist an application for removal.[15] Where an opponent to removal relies on only one, or few, instances of alleged use, such instances should be established by 'if not conclusive proof, at any rate overwhelmingly convincing proof'.[16] The use must be in good faith, in the sense that it be real, as opposed to token, use in a commercial sense.[17] The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent[18] or of a circumstantial nature.[19]
   1. The Opponent relies primarily upon promotion of its goods in Australia, as opposed to the sale of its goods in Australia (of which there is no evidence). The goods are described as being promoted via the Opponent's website, the Australian distributor's website, on social media platforms and through workshops provided by the Opponent.
   2. A significant portion of the Opponent's evidence is problematic in that it is either undated or dated after the Relevant Period, not clearly shown to be use in or directed to Australia, does not relate to goods (as opposed to the business) or depicts goods which do not bear the Trade Mark. Evidence which is dated within the Relevant Period consists of: archived web pages from the archive service Wayback Machine; social media posts; evidence relating to workshops and events held in Australia; and the article in the South China Morning Post.

1. Several of the archived web pages from 'myavita.com' that are dated in the Relevant Period use the Trade Mark to refer to a business rather than to identify the goods listed in the registration. For example, a 'Testimonials' page and a page headed 'Growth, leadership and sustainability' have been archived several times, and variously state:

An excellent platform for your health and wealth! That is the avita dream.

avita is where both health and wealth is possible! This is really a better life!

avita is much more than life...nothing can compare to how much it can give in support towards a better life!

At avita, we pride ourselves in the deep understanding of healthcare trends in preventative and anti-aging medicine as well as a heartfelt focus on sustainable and effective therapies for our lives.

avita's mission of creating "a better life" has propelled us to strive in the development of world class products manufactured using state-of-the-art technology.

Aromatherapy marked the beginning of avita's journey.

Over the past decade, avita has been committed to the continuous development of new, innovative products.[20]

1. Of the archived web pages dated within the Relevant Period, seven depict goods bearing the Device Trade Mark or describe goods with reference to the Trade Mark, being: hinoki essential oil (hinoki being a type of tree); an essential oil diffuser; a shower gel; a skin anti-aging product; and a facial cleanser. The question is whether these pages amount to use of the Trade Mark in respect of these goods in Australia. In Ward Group Pty Ltd v Brodie & Stone Plc ('Ward Group') Merkel J said of use upon the internet.

In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[21]

1. This case indicates that what is required is not only use directed or targeted at Australia, but also that the Trade Mark be downloaded in Australia (such as by someone in Australia perusing the 'myavita.com' website).[22] There is some evidence of the Opponent's intention to direct or target its website at Australia: the 'Contact Us' page lists an Australian distributor[23] and another page directs the user to select their region and language, of which Australia is an option.[24] However, this evidence is dated after the Relevant Period: the first as at 14 June 2024 and the second as at 18 June 2024 (with an archived web page dated 6 December 2023[25]). There is also no evidence of the Trade Mark being downloaded in Australia, such as traffic data to the website, orders from Australian consumers, or enquiries about products from Australian consumers.
2. The archived web pages therefore provide limited support to the assertion that the Trade Mark has been used in Australia in the Relevant Period.

1. The evidence of use comprising social media posts on Facebook, Instagram, YouTube and LinkedIn[26] suffers a similar flaw. Whilst two Facebook posts list the availability and price of a product in several jurisdictions of which Australia is one, there is no indication that anyone in Australia viewed the posts. None of the social media posts contain any comments, reactions or interactions from anyone in Australia, nor are there any social media analytics for any of the platforms.
2. In Ward Group Merkel J commented in relation to publications or statements made on the internet:

When such publications or statements are made to the world at large, and not to persons or subscribers in a particular jurisdiction, there is some difficulty in regarding them as having been made by a website in a particular jurisdiction.[27]

1. The social media posts are representations made to the world at large. As stated above there is no evidence of Australian interaction with any of the posts, and the numbers of views or likes (where relevant) are modest, such that there is no suggestion Australian audiences have a level of familiarity with the social media profiles on account of vast numbers of followers or viewers.
2. Accordingly, without more I am not satisfied that the social media posts represent use of the Trade Mark in Australia.

1. The Opponent held an 'avita Voyages' trip in Australia in Melbourne in 2019. Noting first that this is outside of the Relevant Period, there is nothing in the evidence relating to this trip that mentions goods. Rather, it appears to be an incentive or reward to marketers and sellers of the Opponent's products.
2. The photograph of four individuals,[28] two of which hold the Opponent's products, is tenuous evidence of a workshop. One of the products named 'Lifebiotics' displays the Device Trade Mark, and the screen capture of the photograph's details indicates it was taken within the Relevant Period. However, the only suggestion that this photograph relates to a workshop is the mere fact that four individuals are posing for photograph with two of them holding the Opponent's goods. Otherwise, there is nothing in its context to suggest that it represents a workshop held in Australia, nor how the individuals came to be in possession of the Opponent's goods. Nor is the Trade Mark itself shown.
3. The undated photograph of a person speaking to a small group of people,[29] wherein the Device Trade Mark appears in the bottom corner of an electronic screen, does not show the Trade Mark, nor does it make any mention of goods; nor are any goods displayed. It is therefore not evidence of use of the Trade Mark in the Relevant Period in respect of the goods specified in the registration.
4. The event memo[30] is in relation to a speaking event to take place on St Kilda Road and displays the Device Trade Mark. It does not show the Trade Mark, nor does it mention any goods - it speaks only generally of immunity and concern with coronavirus. It is therefore not evidence of use of the Trade Mark in respect of the specified goods. I note further that the event itself was scheduled to take place shortly after the Relevant Period.

1. The article from the South China Post is dated within the Relevant Period, refers to the Trade Mark, and describes some of the Opponent's goods. It also contains the statement:

Within Asia-Pacific, avita has established offices and branches in Singapore, Taiwan, Thailand, Malaysia, Indonesia, Japan, Hong Kong, the Philippines and Australia, and employed a network marketing structure to communicate more effectively with consumers. In these nine markets, the company cooperates with top leaders referred to as diamond presidents in organising product knowledge courses and other learning activities for better distributor engagement.[31]

1. However, whilst it refers to an established office in Australia there is no way to determine from the article which, if any, of the specified goods are sold in Australia and whether they do so under the Trade Mark (or the Device Trade Mark, or even another trade mark - AVITA being absent from the packaging of a number of products, whether in word or device form).

1. When considering the totality of the evidence, I am not satisfied that the Trade Mark has been used in the course of trade in Australia in respect of the goods specified in the registration. Much of the evidence does not show use of the Trade Mark, as opposed to the Device Trade Mark or other trade marks, and much of it is not in relation to goods but rather in relation to a business model.
2. Other issues with the evidence include that there is little evidence of relevant use taking place in Australia, and that the Australian distributor is not shown to be authorised (although the evidence relating to Scent'al Australia is not relevant in any event).
3. I note also that the period between first claimed use in Australia (2008) and the end of the Relevant Period (2023) is approximately 15 years. Despite the lengthy period of alleged trade in Australia the Opponent is unable to demonstrate a single sale or enquiry about the specified goods from an Australian customer.
4. Taking account of the evidence dated during Relevant Period, and in the context of the totality of evidence, I am not satisfied that that the few instances of alleged use represent 'overwhelmingly convincing proof'[32] that the Trade Mark was used in Australia in respect of the goods specified in the registration.
5. Neither the evidence nor the Opponent's submissions assert that there was an obstacle to use of the Trade Mark during the Relevant Period, and so I will not address s 100(3)(c).
6. Accordingly, the ground under which the application for removal was made is established. I turn then to the question of whether I should exercise my discretion not to remove the Trade Mark.

1. In respect of the discretion the Registrar has not to remove a trade mark where grounds for removal have been established, the Opponent points to the following factors identified in E & J Gallo Winery v Lion Nathan Australia Pty Limited ('Gallo') for consideration:

a) There has been no abandonment of the trade mark; > > b) The registered proprietor of the mark still had a residual reputation in the mark; > > c) Any sales after the non-use period; > > d) Whether the removal applicant had entered the market without having taken stops to ascertain from the Register whether anyone had a right to exclude their use of the mark; and > > e) Whether the registered proprietor was not aware of the removal applicant's sale under the mark.[33]

2. The Court noted that this was not an exhaustive catalogue of factors that may be taken into account, but that they provide assistance in making the determination.
3. I bear in mind also that in considering the discretion, the interests of the parties are weighed against the public interest in the Register being an accurate record of trade mark ownership. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd ('PDP'), the Full Federal Court identified a number of propositions relevant to the exercise of the discretion, including:

(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. ...[34]

1. There are therefore a number of private interest considerations (as identified in Gallo) as well as a balance to be struck with public interest considerations (as identified in PDP). Here, there is no indication of any abandonment of the Trade Mark, but there is also little evidence of a reputation (residual or current) of the Trade Mark in Australia. There is also no evidence of any sales of goods, although there is a reference to more than SGD 10 million in sales being achieved by the speaker to whom the 'event memo' relates (though not in relation to any specific goods and not apparently in Australia). It is not known whether the Applicant entered the market with knowledge of the Opponent's Trade Mark, nor whether the Opponent was aware of any sales made by the Applicant.
2. I mention also the long period of registration in Australia and the very limited evidence that has been adduced of use in Australia in that period.
3. The Opponent submits that use has been shown upon at least a certain range of goods, and that the remaining specified goods are of the same description as that range - a consideration relevant to the exercise of the discretion, in the interests of avoiding fragmented ownership of trade marks and thereby confusion and deception.[35] However, I am not satisfied of the Opponent's original premise: that is, that use of the Trade Mark in Australia has been established in respect of any of the specified goods. The Opponent also points to the Applicant not filing any evidence which would indicate the registration of the Trade Mark presents a commercial or legal obstacle. It is true that the Applicant did not file evidence, and in borderline cases this might have more force than it does here. However, in the face of the very limited use shown of the Trade Mark in Australia, it does not bear heavily on the consideration.
4. Weighing these factors against the public interest in having unused trade marks removed from the Register, the balance of favour tends towards removal of the Trade Mark.

1. The Opponent has not rebutted the allegation of non-use, and I am not satisfied that I should exercise my discretion to maintain the registration. Accordingly, I direct that registration 1189499 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

1. The Applicant has succeeded in its application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

[1] Unless otherwise stated, all references to a section or regulation in this decision are references to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) ('Regulations').

[2] Per Pfizer Products Inc v Karam [2006] FCA 1663, [26] (Gyles J) with respect to oppositions under s 52 of the Act.

[3] Austin, Nichols & Co Inc v Lodestar Anstalt ('Austin') [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ), citing Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273].

[15] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J) ('Woolly Bull').

[16] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J) ('Nodoz').

[19] Trina Trade Mark [1977] RPC 131.

[21] [2005] FCA 471, [43] ('Ward Group').

[22] I bear in mind also that Ward Group Pty Ltd v Brodie & Stone Plc is not a statement of principle that use in Australia will be established where these factors are satisfied, only that it is 'likely'.

[33] [2008] FCA 934, [202] (Flick J), citing Hermes Trade Mark [1982] RPC 425 (Falconer J).

[34] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

[35] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [493]; Pioneer Computers Australia Pty Ltd v Pioneer [2009] FCA 135, [193]-[223].