2026 ATMO 6

Trade Marks Act 1995 (Cth) - section 96 opposition: opposition to reg 17A.48C application for partial cessation of protection - intent to use inherent in filing of Trade Mark application - opponent asserts its intention at the filing date to use the Trade Mark - Protected International Trade Mark to remain on Register in its current form

1. This decision is pursuant to an application made on 22 September 2023 under s 92(4)(a) of the Trade Marks Act 1995 (Cth) ('Act') by Gibco Pty Ltd as Trustee of Gibco Trust Incorporated ('Applicant') for partial cessation of protection of the protected international trade mark detailed below.[1]

Class 18: Leather for furniture; furniture coverings for leather; leather trimmings for furniture; bags; handbags; suitcases; rucksacks; wallets; purses; briefcases; leather and imitation leather briefcases; trunks

Class 20: Furniture; metal furniture; leather furniture; plastic furniture; office furniture; school furniture; wardrobes; sofas; tables; armchairs; chairs; beds; mattresses; pillows; bedside tables; dressers; sideboards; furniture shelves; furniture parts; umbrella stands; magazine racks; coat racks; garden furniture; mirrors; furniture, mirrors, picture frames; cabinetry; mannequins.

Class 35: Retail and wholesale services of lighting fixtures and fittings, chandeliers, stem lamps, arc lamps, oil lamps, laboratory lamps, electric lamps, lighting lamps, lighting bulbs, lighting lanterns, lampshades, lighting torches, lamp tubes, lighting tubes, glass for lamps; retail and wholesale services of leather articles, leathers, leather goods, imitation leather goods, bags, handbags, suitcases, rucksacks, wallets, purses, briefcases, leather and imitation leather briefcases, trunks, leather key cases, umbrellas, harnesses and other saddlery; retail and wholesale services of furniture, metal furniture, leather furniture, plastic furniture, office furniture, school furniture, wardrobes, sofas, tables, armchairs, chairs, beds, mattresses, pillows, bedside tables, dressers, sideboards, furniture shelves, furniture parts, wooden or plastic staircases, umbrella stands, magazine racks, coat racks, garden furniture, mirrors, frames, cabinetry, mannequins; retail and wholesale services of carpets, door mats, mats, floor coverings, non-textile wall coverings, upholstery papers, fabric wall coverings, foot-cleaners [door mats], mattings, bath mats, rugs.

1. The goods that are sought to be removed from the above specification are the Registered Goods in class 20 ('Class 20 Goods') other than for human use ('Removal Goods'). To put it another way, the Applicant seeks that the Registrar amend the specification for the Class 20 Goods to add the following 'all of the foregoing being only for human use; none of the foregoing being goods for animals or pets' to the registration on the Register of Trade Marks ('Register').
2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.
3. Baxter S.r.l. ('Opponent') has opposed the application to partially cease protection of the Trade Mark, filing a Notice of Intention to Oppose removal on 29 November 2023 and a Statement of Grounds and Particulars ('SGP') on 20 December 2023. The Applicant filed a Notice of Intention to Defend on 6 February 2024.
4. The parties filed the following evidence in this matter:

Luigi Bestetti, Chairman of the Board of Directors of the opponent ('Bestetti declaration')

Jessica Gibbins, Company director of the Applicant ('Gibbins declaration')

1. 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 20 February 2025, the Opponent requested a hearing by submissions and paid the appropriate fee (the Applicant later requested to attend and paid the appropriate fee). The matter was set down for a hearing on 7 November 2025. In line with usual practice, a letter was sent to the parties on 30 September 2025 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 24 October 2025 ('Opponent's Submissions'). The Applicant filed written submissions on 30 October 2025 ('Applicant's Submissions').

1. On 21 October 2025 the Opponent filed additional evidence being Confidential Annexure 21 to the Bestetti declaration ('Late Evidence'). The Late Evidence is best described in paragraph 19 of the Bestetti declaration which states:

In early 2023, the Opponent commenced discussions with the Italian architect, Massimiliano Fuksas, to design a range of pet furniture and furnishings. Shown to me and marked Confidential Annexure 21 is a presentation dated 7 July 2023 setting out the details of a proposed partnership for the designing of pet furniture and pet accessories.

1. The Opponent gives evidence that the Late Evidence was material that was meant to be filed alongside the remaining annexures to the Bestetti declaration but was inadvertently omitted. What appears to have happened is that another document, clearly not the document that paragraph 19 of the Bestetti declaration refers to, was inadvertently included as Confidential Annexure 21 (indeed it appears to be the document that was supposed to be Annexure 2 and the documents identified as Annexure 2 and Annexure 3 to the Bestetti declaration should have been combined as Annexure 3) and this error was not identified until the time the submissions are prepared. I am satisfied that the omission was unintentional (as the Late Evidence is clearly the document identified in both paragraph 19 of the Bestetti declaration and in the cover letter, noting that the document annexed in the EIS as Confidential Annexure 21 is a public facing blog post and is in no way confidential).
2. The Applicant has objected to consideration of the Late Evidence, submitting that the Bestetti declaration did contain a Confidential Annexure 21 (as outlined above) and there is an insufficient explanation of why the Late Evidence was omitted. The Applicant also submits that it would suffer significant prejudice if the Late Evidence was considered given that the Applicant has had no opportunity to put on its own evidence as to the validity and relevance of the Late Evidence. The Applicant's submissions also submit that the Late Evidence is not relevant.
3. The Trade Mark Examiners Manual at Part 51, paragraph 2.6 provides a summary of considerations for the Delegate when deciding to have regard to out of time evidence. The considerations are stated below:

The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered.

Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party. The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account. The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).

The issues the filing party needs to address in its submissions include:

• Why the evidence was filed after the due date
• If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
• What the evidence shows
• Why that information is crucial to the delegate's decision
• Why it is in the public interest to have the information considered
• What is the balance of convenience for the parties if the information is considered.

1. While I appreciate the potential prejudice to the Applicant, I consider that this is a case where it is appropriate to have regard, under the provisions of reg 21.15(4), to the out of time evidence and as such I shall treat the Late Evidence as Confidential Annexure 21 to the Bestetti declaration. Contrary to the Applicant's Submissions, the nature of the evidence itself and the manner in which it is referred to in paragraph 19 of the Bestetti declaration makes it obvious that the Bestetti declaration was prepared with this exact document in mind, and I accept the Opponent's evidence that the omission was inadvertent.
2. For the reasons I discuss further later in this decision, I also consider that the evidence is highly relevant to my decision showing (albeit after the relevant date, but before the commencement of this opposition) consideration by the Opponent of use of the Trade Mark for pet furniture. Given the relevance of the Late Evidence, I consider that it is in the interest of the public to have this matter determined based on the full and correct record of evidence the parties intended to submit. While I accept that the Applicant does suffer prejudice in this matter, in that it has not had the opportunity to prepare evidence in answer in response to the Late Evidence; it is difficult to identify what evidence in answer it could have usefully prepared, noting that the Late Evidence is an internal corporate document of the Opponent. I consider the Applicant's Submissions that it could have filed evidence as to the validity and relevance of the Late Evidence to be speculative at best and note that it has alread been able to put on extensive submissions as to the relevance of the Late Evidence. I am also conscious of the considerable prejudice that the Opponent would suffer were I to find that there was no intention to use the Trade Mark by reason of the decision to exclude intended but mistakenly omitted evidence. Accordingly, I shall have regard to the Late Evidence in this decision.
3. I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, any oral submissions made by the parties and the evidence listed earlier in this decision:
   • The Application for Removal;
   • The Notice of Intention to Oppose and SGP;
   • The Applicant's Submissions; and
   • The Opponent's Submissions.

1. Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as 'cessation of protection of an international trade mark'.
2. In respect of this matter s 92 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:

(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:

(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;

1. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

100 Burden on opponent to establish use of trade mark etc.

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) any allegation made under paragraph 92(4)(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:

(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 opposed application relates ( relevant goods and/or services ); or

(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

1. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2] In Blount Inc v Registrar of Trade Marks, Branson J observed:

Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Reifek v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[3]

1. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

1. Though the onus is, in terms of s 100, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[4] 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 ... a motion to expunge, the burden must rest on ... 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.

1. While this observation was made in proceedings under the Trade Marks Act 1955 (Cth), where the onus was on 'the person aggrieved' (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[5] the Registrar's delegate Mr Forno said:

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.

1. The EIS gives evidence that the Opponent is an Italian luxury furniture manufacturer founded in 1990 which has sold the Class 20 Goods in Australia since 2010. The Opponent provides extensive evidence of the Opponent's use of the Trade Mark in respect of the Registered Goods and Services, in particular furniture products, both in Australia and internationally.
2. At paragraph 17 of the Bestetti declaration the declarant states that the Opponent had a good faith intention to use the Trade Mark in Australia at the time of registration for all the Class 20 Goods. The declaration then states that although the current range of goods does not include furniture items designed for pets, the Opponent has explored possibilities to extend the range of furniture items to pet furniture, and annexes, at Confidential Annexure 21, a presentation dated 7 July 2023 setting out the details of a proposed partnership for the designing of pet furniture and other accessories with an Italian architect. The Opponent also gives evidence of a number of other furniture manufacturers in the Australian market that produce furniture for pet owners and pets.
3. In response, the EIA gives evidence that the Applicant is involved in the pet products industry. The declarant gives evidence that the pet products category is a different and distinct category from the furniture products offered by the Opponent under the Trade Mark as they are meant to be used by different species and are generally marketed and supplied through different trade channels, most commonly being pet supply stores. The Applicant also gives evidence that the Trade Mark has been cited against its proposed trade mark applications for BAXTER BONE and BAXTER BONE (Figurative) (Application Nos. 2317548 and 2317549) and thus it has an interest in seeking the removal of the Trade Mark.
4. I first note that the Opponent's evidence does not show use of the Trade Mark in Australia for the Removal Goods so the only question is whether at the relevant date the Opponent had an intention to use the Trade Mark for the Removal Goods. While noting the paucity of the documentary evidence provided by the Opponent in this matter, I am satisfied that the Opponent's evidence, which includes a clear sworn statement of an intention to use the Trade Mark for all the Class 20 Goods (which would necessarily include the Removal Goods) at the relevant date, is sufficient to shift the onus in this case to the Applicant. In addition to the sworn statement, the EIS also contains at Confidential Annexure 21, documentary evidence that the Opponent actually took considered steps to investigate the use of the Trade Mark for the Removal Goods. While I accept the Applicant's Submissions that this evidence postdates the relevant date by several years, I consider that this evidence (which predates this application and thus was likely prepared in good faith) at the minimum supports the other material in the EIS which illustrates the feasibility of an entity such as the Opponent considering and expanding their furniture line to pet furniture. It operates to take this case out of the category of cases where the sole evidence of intention is a bare statement restating the requirements of s 92(4)(a) and thus the evidence, when taken as a whole, is sufficient to shift the onus to the Applicant.
5. The Applicant's evidence does not satisfy its onus to demonstrate that the Opponent lacked an intention to use the Trade Mark at the time of registration. There is no evidence specific to the Opponent and its intention. Rather, it primarily consists of evidence that the pet products category is a different and distinct category from the furniture products offered by the Opponent and hence the Opponent was unlikely to have had the intention to use the Trade Mark for the Removal Goods. This is belied by both the Opponent's evidence of the various furniture manufacturers who also offer pet furniture under the same mark, but also the Opponent's evidence that they had actually investigated a partnership to design and manufacture pet furniture prior to the commencement of this removal application.
6. I am satisfied that at the relevant date the Opponent intended to use the Trade Mark for the Removal Goods. The Opponent has established its opposition in relation to s 92(4)(a).

1. I decide that the Opponent has established its opposition to cessation of protection in respect of the Removal Goods.

1. The Opponent has been successful in relation to its opposition to the application for cessation of protection of the Trade Mark and has requested its costs. I direct that costs in relation to the application for cessation of protection for protected international trade mark number 2146728 be awarded against the Applicant in accordance with Schedule 8 of the Regulations.

[1] Technically an application to cease protection of a protected international trade mark is to be made pursuant to r 17A.48C of the Trade Marks Regulations 1995 (Cth). However, reg 17A.48D provides that Part 9 of the Trade Marks Act 1995 (Cth) (being the part of the Act dealing with an application for removal) applies in relation to an application for cessation of protection and in particular, reg 17A.48D(f) provides that an application under s 92 to remove a trade mark is taken to be a reference to an application for cessation of protection.

[2] Pfizer Products Inc. v Karam [2006] FCA 1663, [26] (Gyles J) and more recently: 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.

[3] [1998] FCA 440 (citation omitted).

[4] [1960] HCA 47, [21].

[5] [2000] ATMO 31.