Opponent: Jesmini Ambikapathy of counsel, instructed by Minter Ellison

Applicant: Andrew Sykes of Counsel, instructed by MPIB

2026 ATMO 35

Trade Marks Act 1995 (Cth) - s 96 opposition - application under s 92(4)(b) - opposition partly successful. Discretion not exercised. Registration to be restricted.

1. This decision concerns an application made on 29 February 2024 pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] ('Removal Application') by Freedom Screens Capital Pty Ltd ('Applicant') for the complete removal of the trade mark detailed below from the Register of Trade Marks ('Register').

Class 6: Metal frames, fittings and components for wardrobe door and panel installations; metal frames, fittings and components for shower screen systems; shower screens of metal; metal framed sliding and swing doors with panels of glass and other materials for shower enclosures; metal shower screens and enclosures and components for shower screens and enclosures; metal frames, channels, tracks and door grip stiles for shower screen and wardrobe door systems

Class 19: Building materials (non-metallic) other than acoustic or architectural panelling, wall tiles, linings and ceiling systems; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; non- metallic frames, fittings and components for wardrobe door and panel installations; non-metallic frames, fittings and components for shower screen systems; shower screens not of metal; non-metallic framed sliding and swing doors with panels of glass and other materials for shower enclosures; non-metallic shower screens and enclosures and components for shower screens and shower enclosures; non-metallic frames, channels, tracks and door grip stiles; non-metallic roller adjustment brackets and head channel spacers

1. Dias Aluminium Products Pty Ltd ('Opponent') has opposed the Removal Application, filing a Notice of Intention to Oppose on 6 May 2024, followed by its Statement of Grounds and Particulars on 6 June 2024. The Applicant filed a Notice of Intention to Defend on 27 June 2024.
2. The parties then proceeded to file the following evidence:

Gabe Kyparisis, General Manager of the Opponent ('Kyparisis')

1. Once the evidence stage concluded, the parties had the opportunity to request a hearing. Both parties requested to be heard in person. At the hearing which took place on 6 February, 2026, the Opponent was represented by Jesmini Ambikapathy of Counsel with Shyama Jayaswal and Grant Williams of the Opponent's representatives, MinterEllison, in attendance at the hearing. The Applicant was represented by Andrew Sykes of Counsel, instructed by Jarrod Lichtblau of MPIB, also in attendance. I heard and determined the matter acting as a delegate of the Registrar of Trade Marks ('Registrar').

1. Part 9 of the Act deals with the removal of trade marks from the Register on account of non-use. Section 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:

(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) may not be made before a period of five years has passed from the filing date of the Trade Mark[4] and I confirm that this period has elapsed. Pursuant to s 100(1), the Opponent bears the onus of rebutting the allegation under s 92(4)(b) and in this case the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 29 January 2024 ('Relevant Period').

1. According to Kyparisis, the Opponent was founded in 1986. It is headquartered in Victoria with branches in New South Wales, Queensland and Western Australia. The Opponent designs, acquires, distributes and markets aluminium extrusions and other components for the manufacture and assembly of shower screens, wardrobe door systems and associated products.
2. Since 2001 the Opponent claims to have used the Trade Mark in respect of frames, fittings and components for shower screens. In particular, Kyparisis declares that the Opponent has used the Trade Mark during the Relevant Period in respect of sales of the following goods:
   • frames, fittings and components for shower screen systems;
   • shower screens;
   • framed sliding and swing doors with panels of glass and other materials for shower enclosures;
   • shower screens and enclosures and components for shower screens and enclosures; and
   • frames, channels, tracks and door grip stiles for shower screen systems.[5]
3. Kyparisis declares that the Opponent supplies its products predominantly to customers who assemble and install shower screens and wardrobes and states that the goods listed in [9] sold by reference to the Trade Mark were purchased mainly by customers who install showers. The supporting material is discussed as necessary in what follows.
4. As indicated above, there is no evidence from the Applicant.

1. To rebut the allegation of non‑use, the Opponent must establish that the Trade Mark was used in Australia in the course of trade during the Relevant Period in relation to the Registered Goods. However, in its written submissions and at the hearing the Applicant conceded that whilst the Removal Application was filed for the removal of the Registration in its entirety, its review of the evidence revealed use of the Trade Mark in relation to metal framed shower screens. Accordingly, the Applicant indicated that it no longer pressed for the removal of the class 6 goods being, "shower screens of metal", "metal framed swing doors with panels of glass for enclosures" and "metal shower screens and enclosures".
2. That concession aside, its submission is that there is no trade mark use of INFINITY in relation to any other goods, nor in connection with parts and fittings. Its primary submission is that use of the Trade Mark is limited to promotion of a metal framed shower screen as a complete product, and has not been used as a trade mark - that is, as a badge of origin - in respect of constituent parts such as door handles, hinges, and glass.
3. I have no issue with the evidence insofar as it falls within the Relevant Period, but the question is whether there has been use of the Trade Mark in respect of more than "shower screens of metal", "metal framed swing doors with panels of glass for enclosures" and "metal shower screens and enclosures".
4. Exhibited to the Kyparisis declaration are copies of product brochures which show that the Opponent promotes a wide range of shower screens in fully framed, semi-framed and frameless options at different price points. Each seems to have its own trade mark, registered or not. Several brochures show the INFINITY name in conjunction with descriptions such as "framed pivoting shower screen system with magnetic framed door". As with nearly all of the Opponent's products, the emphasis is on "design flexability".
5. The evidence also includes internal documents, being inventory sales listings describing shower screens, hinges (square and rectangular), running tracks, channels, wall jambs, water seals, wall connectors, grub screws, and so forth. Some of these itemised goods are linked to the Trade Mark, for example, "WALL JAMB INFINITY". Most are not and a reasonable inference is that whilst the different ranges allow choice in price, colours and styles, the "systems" will include the use of common fittings and fixtures such as hinges and handles which perform essentially the same function and are sold across the ranges.
6. The Applicant's objection to the evidence is that there is no evidence that these separate parts are promoted or sold by reference to the Trade Mark. An analogy used by the Applicant at the hearing was that of a bicycle sold in a flatback, the submission being that a bike had been sold by reference to a trade mark, not that each component part had been sold by referable to the mark.
7. The difficulty with that analogy is that class 12 recognises bicycles as discrete goods although they are a composite article. The Opponent in this case is, in a sense, caught between its own marketing language, and the inflexibility of the Nice classification system. The Opponent is not selling a "shower screen system", nor would that description have satisfied classification requirements. It is selling the parts and fitting for a shower enclosure and in my assessment to a large degree the Registered Goods reflect that. The problem with the Applicant's analogy is that the restriction to the goods it calls for is akin to asking the bicycle seller to limit a class 12 registration to, for example, bicycle frames.
8. Section100(1) requires the Opponent to rebut the allegation under s 92(4)(b) on the balance of probabilities.[6] 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 (Rejfeck 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.[7]

1. The evidence as a whole convinces me that sales of INFINITY shower screens are likely in most cases to be the sale of a collection of parts under or by reference to the Trade Mark. There is no serious doubt about actual sales of INFINITY products nor, as I said before, during the Relevant Period. The Applicant's complaint that there is no evidence that these parts would be sold (separately or otherwise) by reference to the Trade Mark is neither here nor there if those same parts are sold by the Opponent when it sells an INFINITY "shower screen system", or the parts and fitting for an INFINITY shower enclosure. There need only be one qualifying use.
2. In my assessment, the Opponent has during the Relevant Period used the Trade Mark on or in relation to the following class 6 goods:

Class 6: Metal frames, fittings and components for wardrobe door and panel installations; metal frames, fittings and components for shower screen systems; shower screens of metal; metal framed sliding and swing doors with panels of glass and other materials for shower enclosures; metal shower screens and enclosures and components for shower screens and enclosures; metal frames, channels, tracks and door grip stiles for shower screen and wardrobe door systems

1. The Opponent pointed to certain nylon, plastic and glass materials. In my assessment the goods said to be made from those materials are either so de minimus in nature, or so tentatively linked to the Trade Mark, that I cannot see a basis for a finding of use of the Trade Mark in relation to any class 19 goods.

If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

1. The case of Austin, Nichols & Co Inc v Lodestar Anstalt[8] provides the following guidance:

The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[9]

1. Further, in Health World Ltd v Shin-Sun Australia Pty Ltd, it was said:

[T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have "integrity" and that it be "pure". It is a "public mischief" if the Register is not pure, for there is "public interest in [its] purity". The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function - to indicate the trade origins of the goods to which it is intended that they be applied.[1]

1. Section 101(4)(a) allows me to take into account whether the Trade Mark has been used by its registered owner in respect of similar goods to those to which the Removal Application relates. The Opponent argues for preservation of Trade Mark in respect of wardrobe systems and certain non-metallic goods loosely associated with shower screen and wardrobe systems. Its submission is that since it is a supplier of both, and given their similarity, use by another trader of the Trade Mark would be likely to lead to confusion since consumers would likely think that the products emanated from the Opponent.
2. In other circumstances that submission might have more power but central to this decision has been the observation that the classification scheme required the Opponent to describe the component parts of its shower screen and wardrobe systems with particularity. I see no reason to interpret any of the used goods more broadly or to extend protection beyond the already itemised goods. I decline to exercise my discretion.

1. The Opponent has been partially successful in rebutting the allegation of non-use. I direct that registration 848484 is to remain on the Register for the following class 6 goods only:

Class 6: Metal frames, fittings and components for shower screen systems; shower screens of metal; metal framed swing doors with panels of glass and other materials for shower enclosures; metal shower screens and enclosures and components for shower screens and enclosures; metal frames, channels, for shower screen

1. If the Registrar is served with a notice of appeal, then the Registration shall be dealt with as the Court sees fit.
2. The parties have requested an award of costs. I find that each side has had a measure of success and so make no award as to costs.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') or regulation of the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.