Applicant: Michelle Calder of Spruson & Ferguson

Trade Marks Act 1995 (Cth) - applications under section 92 - sections 92(4)(a) and 92(4)(b) - section 92(4)(b) considered and not established - exercise of Registrar's discretion not appropriate - trade marks to be removed from the Register

1. On 21 November 2023 Ardex GmbH ('Removal Applicant') filed applications under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] ('Removal Application(s)') for the complete removal from the Register of Trade Marks ('Register') of the following registered trade marks in the name of EBS Holding Pty Ltd ('Removal Opponent'):

Trade mark: ('512 Mark')

Specification: Class 19: Building elements of stone; building materials in the nature of slates for tiling; building products of slate; mineral based building materials having insulating properties; non-metallic building materials in the form of boards; non-metallic building materials in the form of panels

Specification: Class 19: Acoustic building materials (other than for insulation); Building materials made of fibre cement; Building materials made of glass fibres; Building materials made of mineral wool; Cementitious building materials (other than in the nature of paint); Laminated building materials (non-metallic); Mineral based building materials having fire protection properties; Non-metallic building materials; Non-metallic building materials for flooring; Non-metallic building materials for use in cladding; Non-metallic building materials having insulating properties; Non-metallic building materials having thermal insulation properties; Non-metallic building materials in sheet form

(collectively referred to as the '512 and 898 Marks' and '512 and 898 Goods')

1. On 22 December 2023 the Removal Opponent filed its Notices of Intention to Oppose the Removal Applications, followed by its Statements of Grounds and Particulars on 22 January 2024. On 29 February 2024 the Removal Applicant filed it Notices of Intention to Defend the Removal Applications.
2. Thereafter the Removal Opponent filed the following evidence in support in accordance with the Regulations and filed essentially identical evidence in respect of both oppositions:

• Declaration of Herbert Gunther Klintworth, Director and Secretary of Ecobuild Solutions (Operations) Pty Ltd for the Removal Opponent, made on 7 June 2024, with Annexures HGK-1 to HGK-27 ('Klintworth').

1. The Removal Opponent did not file evidence in answer.
2. Once time for filing evidence had ended the parties were given an opportunity to request a hearing. Both parties requested an oral hearing by videoconference. The matter was allocated to me to determine as a delegate of the Registrar of Trade Marks ('Registrar'). I heard the matter on 8 October 2025. Kerry Chrysiliou of Chrysiliou IP appeared on behalf of the Removal Opponent. Michelle Calder of Spruson & Ferguson appeared on behalf of the Removal Applicant. The parties' oral submissions were supplemented by written submissions filed prior to the hearing.

1. Part 9 of the Act deals with the removal of trade marks from the Register due to non-use.
2. Sections 92(4)(a) and 92(4)(b) provide:

(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;

(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.

Note 1: For file and month see section 6.

Note 2: If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

Note 3: For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.

1. Before proceeding, I note that the Removal Opponent submits that the non-use removal action under s 92(4)(b) in relation to the 898 Mark was filed prematurely. The Removal Opponent states that the 898 Mark was entered on the Register on 16 November 2020 and that s 92(4)(b) says that: "(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...". For the Removal Opponent the registration was not vulnerable to removal for non-use until after it had remained registered until 16 November 2023. As the non-use application was filed on 21 November 2023 and the one month before the day on which the non-use application was filed ended on 21 October 2023 and the registration had not remained registered for a continuous period of 3 years on that date.
2. The period referred to in s 92(4)(b) refers to the period in which the 'trade mark has remained registered'. The starting point for this period is determined by s 72, which states that a registration is taken to have effect from the filing date of an application which in this case is 6 April 2020. This is what is intended by the inclusion of Note 3, which directs the reader to s 72 to determine the date for when registration of a trade mark is taken to have effect. The Removal Application was filed on 6 April 2020, as such it was made after 3 years from the date the trade mark was entered into the Register. Therefore, the application for removal under s 92(4)(b) in relation to the 898 Mark was properly filed in accordance with s 93.
3. The Removal Opponent nominated grounds under ss 92(4)(a) and 92(4)(b). Given the way that s 92(4)(a) is expressed, this provision essentially merges with s 92(4)(b) once a trade mark has been registered for 5 years in the case of the 512 Mark and 3 years in the case of the 898 Mark.[2] Accordingly, it is only necessary to consider the s 92(4)(b) ground.
4. Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of the 512 and 898 Marks is the three year period ending on 21 October 2023 ('Relevant Period').
5. Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).
6. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression 'use in good faith' has a well understood meaning in terms of s 92, namely it is 'real, as opposed to token, use in a commercial sense'. [3] Provided the use is in good faith, a 'single bona fide use of the mark' may be enough to rebut an allegation of non-use.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by 'if not conclusive proof, at any rate overwhelmingly convincing proof'.[6]
7. The principles regarding use as a trade mark 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.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[7]

1. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[8]
2. In accordance with s 101, if the grounds for removal are established, I may decide to remove the 512 and 898 Marks from the Register in respect of any or all of the goods identified in the Removal Applications, or if satisfied it is reasonable to do so, decide not to remove the 512 Mark and 898 Marks from the Register.

Use of the 512 and 898 Marks during the Relevant Period

1. Before proceeding, I note that the Removal Opponent claims use of a 'slightly modified version' of its 512 Mark as follows:

('Logo Mark')

1. The Removal Opponent submits that the Logo Mark qualifies as use under s 100(2), as being the 512 Mark with additions or alterations not substantially affecting its identity.
2. The Removal Applicant argues that use of the Logo Mark and the Removal Opponent's additional logo trade mark ('ES Logo Mark') which appears in the Annexures HGK-21,HGK-24 and HGK-27 to Klintworth, are not use of the 512 Mark with additions or alterations affecting its identity.
3. Under s 100(3)(a), I must consider whether use of the Logo Mark and/or the ES Logo Mark is use of the 512 Mark with additions or alterations not substantially affecting its identity. The test is the same as the test in respect of substantial identity and this requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[9] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:

1. On a side by side comparison, I find the 512 Mark and the Logo Mark are substantially identical. The essential elements of both trade marks are the logo which consists of the letters EC superimposed on a device of two leaves and the letter O inside a square with rounded corners, beside the word BUILD superimposed on the word SOLUTIONS. The 512 Mark consists of the additional words ECONOMICAL LIGHT-WEIGHT INSULATION BUILDING SYSTEMS which appear directly under the essential elements. I consider the additional words in the 512 Mark are non-distinctive elements and a total impression of resemblance emerges.
2. I find that the 512 Mark and the ES Logo Mark are substantially identical. The essential elements of both trade marks are the logo which consists of the letters EC superimposed on a device of two leaves and the letter O inside a square with rounded corners, beside the word BUILD superimposed on the word SOLUTIONS. The 512 Mark consists of the additional words ECONOMICAL LIGHT-WEIGHT INSULATION BUILDING SYSTEMS which appear directly under the essential elements. In comparison the essential elements in Logo Mark are underlined and the additional words ECOBUILD SOLUTIONS appear below the line. I consider the additional wording in both trade marks are non-distinctive elements. As such a total impression of resemblance emerges from a side by side comparison.
3. The Removal Opponent also argues that the ES Logo Mark should be considered as two trade marks, that is, use of the 898 Mark near (underneath) the Logo Mark. In response the Removal Applicant argues that the ES Logo Mark has been used solus and not together and should not be considered as two trade marks. I agree with the Removal Applicant, Annexures HGK-21, HGK-24 and HKG, 27 to Klintworth all show the ES Logo Mark used as a whole. While the Removal Opponent argues that the use of the words ECOBUILD SOLUTIONS underneath the essential elements of the Logo Mark is use of the 898 Mark in the same manner as Allsop J in Anheuser-Busch, Inc v Budejovicky Budvar, Narodni Podnik ('Budejovicky Budvar')[10] found that Budejovicky Budvar used "Budweiser Budvar" as a trade mark on its labels and packaging notwithstanding the presence of a clear, dominant brand: Budejovicky Budvar. In my opinion Budejovicky Budvar can be distinguished from the present matter. In this case the essential elements in the Logo Mark are distinctive material and when viewed in close proximity to the words ECOBUILD SOLUTIONS have the effect of substantially diluting any trade mark significance that attached to the plain words ECOBUILD SOLUTIONS by themselves.[11]
4. Klintworth declares that he is the sole Director of the Removal Opponent and Ecobuild Solutions (Operations) Pty Limited ('EBSO') and the 512 and 898 Marks are used in Australia under a common control and authority. Klintworth annexes current and historical company extracts from the Australian Securities & Investment Commission confirming his directorship of both companies.[12]
5. Klintworth annexes[13] extracts from the Internet Archiving Service Wayback Machine of the website https://ecobuildsolutions.com.au/ ('EBS Website') dated between 28 October 2020 to 25 March 2023. The extracts show the EBS Website's home page which displays the following trade marks and statements about the Removal Opponent and its stockists:

Ecobuild Solutions are experts in researching, sourcing, inspecting and testing building products. Our focus is on sourcing and supplying high quality magnesium oxysulphate ('MOS') cement boards (ie: non-chloride MgO boards) and complementary products.

In our quest to optimise our MOS products, we have vetted dozens of factories, finalised board formulations and specifications, conducted extensive testing, and considered building techniques and installation methodologies. The net result is the supply of high quality, extreme strength MOS cement boards which provide unrivalled benefits to our end-customers.

Our MOS cement boards are branded OxyMag and distributed exclusively via our partners ITI and John Cook & Sons throughout Australia. Stockists of our OxyMag cement boards can be found at the following websites:

www.itiaustralia.com.au

www.johncooks.com.au

1. Klintworth states that the Removal Opponent uploaded a promotional video on YouTube on 8 August 2019 in relation to the OxyMag product. Annexure HGK-22 to Klintworth is a screenshot from the video dated 24 January 2024 displaying the trade mark ('OxyMag Mark') and the following channel name:

1. Confidential Annexure HGK-23 to Klintworth comprises copies of purchase confirmation documentation for OxyMag products issued by EBSO to ITI Pty Ltd ('ITI') dated between August 2021 to September 2023 and to John Cook & Sons Pty Ltd ('JCS') dated February 2022. The purchase confirmations issued to ITI display ITI's trade mark ('ITI Mark') as follows:

1. Confidential Annexure HGK-24 to Klintworth comprises copies of tax invoices issued by EBSO to ITI for MOS products dated between November 2020 to July 2023. The tax invoices from November 2020 to March 2021 are issued under the 512 Mark and the invoices issued from September 2021 to July 2023 were issued under the ES Logo Mark.
2. Confidential Annexure HGK-25 to Klintworth comprises average sales of building products sold under the 512 and 898 Marks in Australia for the years 2021 to 2023.
3. Klintworth states that since around August 2023, when OxyMag products are shipped to customers in Australia, the Removal Opponent supplies a hood which includes the 898 Mark. Annexure HGK-26 to Klintworth comprises a copy of the artwork for the hood and photographs of the hood which shows that the goods are supplied by Ecobuild Solutions. I have reproduced an image of the hood below:

1. In my assessment of the evidence before me, I am not satisfied that the Removal Opponent has used the 512 Mark in relation to 512 Goods or the 898 Mark in relation to the 898 Goods in the Relevant Period.
2. The EBS Website page shows use of the 898 Mark in the domain name and the ES Logo Mark at the top of the page. The page states that the Removal Opponent is an expert in researching, sourcing, inspecting and testing building products and that it supplies MOS cement products branded OxyMag. These OxyMag cement goods are distributed exclusively via it partners ITI and JCS. As such I consider that the Removal Opponent's statements on the EBS Website demonstrates that it is operating as a wholesaler. This is because it has direct relationships with the manufacturers by sourcing products and then suppling those products to its stockists, not directly to the market, in a tiered distribution system.
3. At the bottom of the page the ITI Mark appears next to the OxyMag Mark which further emphasises that it is ITI that supplies the OxyMag products to the market and not the Removal Opponent. Moreover, the Removal Applicant has submitted the OxyMag Mark is a registered trade mark of the ITI,[14] and I note that the Removal Opponent has not provided any licencing agreements with ITI which supports that it is the owner of OxyMag Mark in Australia.
4. The Removal Opponent's You Tube account shows use of the 898 Mark on the handle. However, the screenshot from the Removal Opponent's video does not demonstrate the OxyMag goods are available for sale.
5. The Removal Opponent's sales figures over the Relevant Period are moderate and supported by its evidence of purchase confirmations and invoices. However, none of the documentation reference ecobuild solutions products and only demonstrate that EBSO is the supplier of OxyMag or MOS goods to its stockists ITI and JGS.
6. The Removal Opponent's evidence of the hood covering for the OxyMag products it supplies to ITI shows clear use of the ITI Mark and OxyMag Mark. The hood also includes wording which says that the items are supplied by ECOBUILD SOLUTIONS, and while I consider this inclusion shows use of the 898 Mark, it only identifies the Removal Opponent as providing wholesale services rather than the 898 Goods.
7. While the Removal Opponent submits that the 512 Mark and the 898 Mark are house brands and OxyMag is a sub-brand the evidence before me does not support this finding. Therefore, I find that the Removal Opponent has not used the 512 Mark in relation to the 512 Goods or the 898 Mark in relation to the 898 Goods in the Relevant Period, rather they operate to identify it as a provider of wholesale services.

1. The Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the 512 and 898 Marks for the 512 and 898 Goods in the Relevant Period, pursuant to s 100(3)(c) and in the interests of completeness I have been unable to identify any such obstacles.
2. As there is no obstacle to use of the 512 and 898 Marks, it is therefore necessary to consider whether I should exercise the discretion to allow the 512 and 898 Marks to remain on the Register for any of the 512 and 898 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 Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[15]
2. In this matter, the question is whether it is reasonable not to remove the 512 Mark in respect of the 512 Goods and the 898 Mark in respect to the 898 Goods even though the Removal Opponent did not establish that it had used the 512 Mark and 898 Mark in relation to the respective goods.[16]
3. In Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd,[17] Bennett J stated that the range of factors considered in the exercise of the discretion has included whether or not:

(b) the registered proprietor of the mark still has a residual reputation in the mark;

(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

(d) the applicant for removal had entered the market in knowledge of the registered mark;

(e) the registered proprietors were aware of the applicant's sales under the mark;

(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services...[18]

1. The public interest and the interests of the parties are inherent in the above factors. In this regard Austin, Nichols & Co Inc v Lodestar Anstalt[19] provided 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.[20]

1. The Removal Opponent submits that it has not abandoned its 512 and 898 Marks and that it has made sales in 2024. The Removal Opponent argues that it still has a residual reputation in the 512 and 898 Marks and Klintworth annexes four examples of building products the Removal Opponent has promoted under the 512 and 898 Marks between 2012 and 2020:
   • Realstone: being building element of stone, building element in the nature of slates for tiling and building products for slate.[21]
   • InsuWall: being a mineral based building materials having insulating properties, non-metallic building materials in the form of boards and non-metallic building materials in the form of panels.[22]
   • InsulFloor: being non-metalllic building materials in the form of boards and non-metallic buildng materials in the form of panels.[23]
2. The Removal Opponent submits that it also used the 512 and 898 Marks in relation to the following building product between 2017 and 2020:
   • EcoEasy: a magnesium oxide building product being a mineral based building material, a non-metallic building material in the form of boards and a non-metallic building material in the forms of panels.[24]
3. Klintworth annexed an extract from Wayback Machine featuring the 'about us' page from the EBS Website dated February 2017. The page states that the Removal Opponent provides innovative building materials and solutions that address the needs of builders, and that its 'simple and direct route to market' as well as its low fixed costs business structure allows it to distribute its products at the most affordable prices possible.
4. The Removal Opponent submits that the Removal Applicant filed a trade mark application under number 2300668 for the following trade mark in classes 1 and 19:[25]

1. The Removal Opponent argues that there are similarities between the RA Mark and the 512 and 898 Marks, and if a third party were to adopt a trade mark similar to either of its trade marks, and use that trade mark for building products in Australia, there would be confusion and/or deception because purchasers would assume that the third party products were sold by, or connected with the Removal Opponent.
2. In response the Removal Applicant submits that the removal of 512 and 898 Marks would not lead to deception or confusion as there is no evidence to show that consumers associate the 512 and 898 Marks with any goods offered by the Removal Opponent.
3. The Removal Applicant submits that the 512 and 898 Marks have been abandoned insofar as the Opponent's 512 and 898 Goods are concerned, as there is no evidence that the Removal Opponent has ever sold or intended to sell, or offered for sale, any goods under or by reference to the 512 and 898 Marks.
4. The Removal Applicant argues that the Removal Opponent has not established a residual reputation in its 512 and 898 Marks, and if a residual reputation exists, that reputation does not subsist in the context of the goods. The Removal Applicant avers that the Removal Opponent could only possibly demonstrate a residual reputation in supplying goods in the flooring or building field. Furthermore, there is a public interest in the Register reflecting what is being used by traders.
5. In my view the Removal Opponent use of the 512 and 898 Marks prior to the Relevant Period is in relation to the sourcing of building products and in the direct market sale of those products. However, I am not satisfied that the Removal Opponent has used the 512 and 898 Marks in relation to the 512 and 898 Goods. The building products promoted by the Removal Opponent appear to be advertised under the Removal Opponent's private labelling, that is, under the names RealStone, InsuWall, InsuFloor and EcoEasy, and the market recognition in the 512 and 898 Marks is solely for the Removal Opponent's services as the sourcing agent and direct market seller of the goods. As such I am not satisfied that the Removal Opponent has a residual reputation in the 512 and 898 Marks in relation to the 512 and 898 Goods.
6. While the Removal Opponent has argued that it has not abandoned the 512 and 898 Marks, and highlights sales of the OxyMag product by the Removal Opponent into 2024, it has only demonstrated market recognition and value in respect of services and not the in the 512 and 898 Goods.
7. The Removal Opponent asks that if use is only found in relation to services, then I am to consider whether or not the 512 and 898 Marks have been used in respect of closely related goods. The Removal Opponent has used the 512 and 898 Marks in relation to sourcing, direct sale, wholesale and in the supply of building materials. Consumers generally obtain building materials through retail or wholesale outlets that are often owned by the manufacturers. In this case the Removal Opponent researches, sources, inspects and test building products to supply them to the market. The building product goods are not manufactured by the Removal Opponent, they are promoted under privately labelled names and the 512 and 898 Marks are used to identify the Removal Opponent as the sourcing agent and the direct market seller/wholesaler/supplier of the goods. I believe consumers of building materials are aware of the surrounding circumstances relating to the Removal Opponent's services and are unlikely to be confused by the use of similar trade marks in relation to the goods.
8. I agree with the Removal Applicant that the removal of the 512 and 898 Marks will not affect the Removal Opponent's ability to continue to provide its services. While the Removal Applicant's private interest in this matter is clear, having applied to register the RA Mark, I am unpersuaded that the removal of the 512 and 898 Marks for the 512 and 898 Goods would result in consumers confusion or practically impact on the interests of the Removal Opponent.
9. Finally, I note the public interest in maintaining the integrity of the Register, which necessitates the removal of unused trade marks. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court 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.[26]

1. Considering all of the above, I am not satisfied that it is reasonable to exercise the Registrar's discretion to allow the 512 and 898 Marks to remain registered in respect of the 512 and 898 Goods.

1. The Removal Opponent has not established its oppositions to removal of trade mark registrations 1368512 and 2079898. I direct that registrations 1368512 and 2079898 be removed from the Register in respect of all the 512 and 898 Goods, one month from the date of this decision. In the event of an appeal, I direct that the removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs in respect of trade mark number 1368512 against the Removal Opponent as allowed by Schedule 8 of the Regulations. In respect of trade mark number 2079898 I award reduced costs against the Removal Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[27]

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) applies to trade mark applications filed from 24 February 2019 onwards. See also, eg, Moores MDP Pty Ltd v Moore Stephens International Licensing [2023] ATMO 86, [23]; Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173, [9]; Bangkok Broadcasting & TV. Co Ltd v Seven Network (Operations) Limited [2021] ATMO 78, [21]; Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3, [22].

[3] [2001] FCA 261, [16].

[5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno).

[6] (1962) RPC 1, 7.

[7] [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

[8] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

[9] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407, 414 (Windeyer J).

[11] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, [133] (Kenny J).

[12] Klintworth, Annexures HGK-1 and HGK-2.

[13] Klintworth, Annexures HGK-21 and HGK-27.

[14] Verified on the Register of Trade Marks, trade mark number 1870779.

[15] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

[16] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ) ('Austin').

[17] [2025] FCA 218.

[19] Austin [2012] FCAFC 8.

[21] Klintworth, Annexure HGK9, HGK-10, HGK-12 and HGK-13.

[22] Klintworth, Annexure HGK-6 and HGK-7.

[23] Klintworth, Annexure HGK-8, HGK-14 and HGK-15.

[24] Klintworth, Annexure HGK-11, HGK16 and HGK-17.

[25] Verified on the Register of Trade Marks.

[26] [2010] HCA 13, [22] (French CJ, Gummow, Heydon, Crennan and Bell JJ) (citations omitted).

[27] [2001] ATMO 78 (Hearing Officer Williams).