1. 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. The non-use application was filed on 20 September 2023 and complies with s 93 of the Act. The application nominated grounds under s 92(4)(b). By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish use of the Trade Mark in Australia in the three year period ending on 20 August 2023 ('Relevant Period') or that the Trade Mark was not used in relation to the Registered Goods because of circumstances that were an obstacle to the use of the Trade Mark during the Relevant Period. The Removal Applicant alleges that there has been no use of the Trade Mark in relation to any of the Registered Goods in the Relevant Period. It is the Removal Opponent who must rebut the allegation of non-use.[2] Any findings of fact are based on the civil standard of the balance of probabilities.[3] The allegation can be rebutted by establishing use by the holder of the Trade Mark or by an 'authorised user'.
2. 'Use as a trade mark' is use of a trade mark as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and the person who applies the sign to those goods.[4] This does not require the actual sale or purchase of the goods.[5] A commercial dealing in relation to the goods under, or by reference to, the sign is sufficient to constitute 'use as a trade mark'. A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge the onus,[6] although if only a single instance of use is alleged it should be established by, 'if not conclusive proof, at any rate overwhelmingly convincing proof'.[7] Moreover, that use which is relied upon should be a bona fide use of the Trade Mark.
3. If the requisite use is not established, in accordance with s 101, I may decide to remove the Trade Mark, or if satisfied it is reasonable to do so, decide not to remove it. I explain this discretion in more detail further below.

1. Briois and Guillou each provide brief historical description of the Removal Opponent's business and its predecessor. The Removal Opponent's predecessor in title in respect of the Trade Mark was Maison AE DOR ('Maison'). The Trade Mark was assigned from Maison to the Removal Opponent on 1 July 2021.
2. At Exhibit 2 to Briois is a pro forma invoice ('Invoice') from Maison which I extract at Schedule 1 to these written reasons.
3. Also present in Exhibit 2 are shipping labels which were generated on the same day as the pro forma invoice, addressed to a business named 'WINEDERFUL INSIGHT CONSULTING' and the same individual contact name. The weight of the goods that is specified on the shipping label matches that specified on the Invoice. Briois states that the shipment was to a distributor based in Victoria.
4. Exhibit 3 to Briois provides undated images of seven bottles of cognac which have various labelling, which purport to illustrate the product listed in the Invoice and which, for reference, I reproduce at Schedule 2 to these written reasons.
5. I otherwise refer to the evidence throughout these written reasons where relevant.

1. I note that the majority of the evidence is either undated, dated outside the Relevant Period or it does not establish use of the Trade Mark in Australia.
2. I turn to Exhibit 2 which contains the dated Invoice. The bottom of the Invoice indicates that it was issued by 'MAISON AE DOR' and I accept that this is the predecessor in title to the Removal Opponent, which is also the holder of the Trade Mark. The Invoice is dated 24 June 2021, which is also within the Relevant Period.
3. In respect of the Invoice the Removal Applicant submits that:

a. The Proforma Invoice appears to have been copied onto a letter head in an attempt to show use of the Mark as the text is at a different angle to the remainder of the letter head.

b. The text of the Proforma Invoice seems to include different fonts which have varying quality due to what appears to be multiple attempts at document reproduction. For example, the text describing the goods is of a different font and quality to some other elements of the document.

c. None of the Cognac items listed are referred to using the Mark.

d. The packaging label and packaging slip do not bear the Mark "A.E. Dor". Rather the mark shown in MAISON A.E. DOR.

e. There is no delivery receipt, nor any other evidence provided to show such as package was actually sent and received in Australia.

f. A Proforma Invoice is not a sales invoice and typically used for cost estimates rather than actual sales.

g. The is no evidence of any other correspondence with the purported delivery recipient such as corroborating email evidence.

1. I note the Removal Applicant's critique of the evidence, including that there is distortion of the text in the Invoice. I consider it to be probable that any such distortion results from a pre-printed paper with a standard letterhead being inserted into a printer, upon which the content text, such as the list of goods and/or the address information have been printed. The other submissions made by the Removal Applicant do not take this matter much further and the Removal Applicant offers only assertions on this point rather than any evidence that the material is, for example, concocted evidence. There are commercially widespread practices as well as likely innocent scenarios which better explain these matters. Accordingly, I am satisfied that it is appropriate to give weight to this evidence and consider it reliable.
2. Evidence of actual and finalised sales of goods, whilst perhaps some of the strongest forms of evidence, is by no means the only manner by which a removal opponent can demonstrate genuine and commercial use of a trade mark. Evidence of a genuine commercial offer, even without a sale and actual delivery, can suffice. The Removal Applicant relies on E & J Gallo Winery v Lion Nathan Australia Pty Ltd where the High Court stated that, '[w]hilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards.'[8] I note that the High Court also noted that on 'the facts here, it is not necessary to decide whether a single use of the registered trade mark in good faith would have been sufficient to resist removal',[9] as a commercial quantity of bottles were imported into Australia and offered for sale. The High Court did not rule out there being a genuine use by way of a pro forma invoice as preventing removal under s 92, nor did it rule out potentially a single bona fide use of a trade mark during the Relevant Period as being sufficient.[10] A pro forma invoice might assist a person seeking to evidence its use of a trade mark. I note that the Invoice states that the relevant goods are samples. The distribution of, for example, samples has sometimes been found to be insufficient to constitute use of a trade mark. The question will ultimately depend on the circumstances and evidence.
3. In Settef SpA v Riv-Oland Marble Co (Vic) Pty Limited ('Settef'), McGarvie J noted of a similar kind of evidence presented by a party:

Because of the small amount of material involved I do not infer that these sales were by way of trade. This was apparently the first transaction [the party] had with Australia. At least the greater part of the second consignment consisted of only two colours. No inference can be drawn from the purchaser's name and there is no evidence before me as to its business or activity. The size and composition of the consignment points in my view to the purchaser purchasing not for resale but for its own use despite the fact that it was a firm and received samples and brochures. I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purpose of trade: W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 93 CLR 182 at 191. The forwarding of samples and brochures is not sufficient to indicate that [the party] was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia...[11]

1. In The Sunraysia Natural Beverage Company Pty Ltd v Ocean Spray Cranberries, Inc the delegate noted of the evidence of use in relation to samples:

It is quite possible that the shipment was simply a small container of samples to allow products to be evaluated for flavour. Such samples would not necessarily have been meant to be an offer to trade and may not in themselves have represented an offer to sell goods under all of the marks in question. Such non-trading use of samples is referred to by McGarvie J in Settef

In such a context, [the opponent to registration] is under an evidentiary onus to clearly establish the facts on which it relies. If it wishes to establish that its products were bought, it should do so. If not, and if it argues that the quantities were samples on offer, it is under the same onus to show that the offer was a real one and to establish what exactly was on offer, and when.[12]

1. In Oakley Inc v Franchise China Pty Ltd, Drummond J noted that

The term "trade" in the context of the phrase in s 17 of the Trade Marks Act 1955 (Cth) is undoubtedly a wide one. It encompasses a wider range of commercial transactions than the actual sale and purchase of marked goods. It has been held that "a use of a mark in an advertisement of goods is a use in the course of trade, and is of course a use in relation to the goods advertised": The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422. The use of a mark on goods in conducting investigations as to whether there might be a market for those goods is unlikely to be a use of the mark in the course of trade: that will generally be the use of a mark in activities preparatory to the commencement of a course of trade. See [Settef] at 417-418. But where the owner of a mark is able to show that it is committed to supplying marked goods to persons prepared to purchase them, activities preliminary to the actual commencement of selling the goods, such as the distribution of marked samples and marked brochures to agents, so that they could show them to prospective customers in soliciting business will probably amount to the use of the mark in the course of the trade: see Settef at 439; [Woolly Bull] at 157 and cf Buying Systems (Australia) Pty Ltd v Studio Srl (1995) 30 IPR 517.[13]

1. The evidence in these proceedings raises difficult questions by its scarcity. As noted by the Removal Applicant, there is little evidence that goods were delivered. The words 'AE DOR' are present throughout the Invoice including at the left side of the top alongside other signs, as well as notably at the middle top section of the Invoice where it states, 'AE DOR a prestigious Trade-mark with an extensive scope of Great Cognacs'. I consider the use of these signs to be use of identical trade marks or those without alterations and additions which substantially affect the identity of the Trade Mark. I also note that a number of cognacs are mentioned as having been the subject of the Invoice. The use of the trade marks as described above appears to be in relation to cognac. I note that there are also images appearing at Exhibit 3 to Briois of various bottles of cognac with the Trade Mark on the bottle. These bottles bear labelling which broadly corresponds with each of the different grades of cognac listed in the Invoice, such as 'VS', 'VSOP', 'XO' as well as product labelling language such as 'Nº6' and 'Nº8'. Briois makes a direct statement that links the bottles mentioned in the Invoice with those shown at Schedule 2 to these written reasons bearing the Trade Mark. However, I have also noted that nine bottles are listed in the Invoice and yet only seven images appear at Exhibit 3.
2. Section 7 provides that the 'use of a trade mark in relation to goods' means 'use of the trade mark upon, or in physical or other relation to, the goods'. Furthermore, s 9(1)(c)(ii) provides that, 'a trade mark is taken also to be applied in relation to goods ... if it is used... ...in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document; and goods are delivered, ... to a person following a request or order made by referring to the trade mark as so used.' Whilst s 9(1)(c)(ii) operates as an evidentiary deeming provision, it does not appear to set a strict requirement for actual delivery of goods for there to be broadly use of a trade mark. Nonetheless, the Removal Opponent must establish that any use of the Trade Mark it relies upon is genuine commercial use.
3. The problem with the evidence is that it is so bare about the details concerning the Invoice that I cannot be satisfied that the activities around it amount to a genuine offer to supply the Registered Goods, an actual sale of the Registered Goods or otherwise genuine preparatory steps. There is no acknowledgement of the receipt of the goods listed in the Invoice. I have no way of knowing whether those goods were solicited or simply shipped, if shipped. There is nothing in evidence which establishes that samples were even dispatched to the addressee and received. No evidence of inquiries, orders and/or preceding or follow up communications is presented regarding the alleged distributor. Noting that the onus falls on the Removal Opponent to establish the relevant matters, the purpose of the shipment, if it took place, cannot simply be presumed. I otherwise note that only general statements are made in Briois regarding use in the Relevant Period, as well as a direct statement that on 24 June 2021 the samples mentioned in the Invoice were sent to the Australian distributor based in Victoria.[14] The Invoice itself nominates less than commercial amounts as owing and the quantity for a single bottle of each particular type of listed cognac. For a trade mark that has been registered since 2005, the fact that the closest thing to direct communication of an offer or an executed sale in the Relevant Period is a pro forma invoice of this kind, with minimal additional details, is telling.[15] The Removal Opponent has otherwise not made any submissions in these proceedings explaining any of these matters. Overall, there is little in the evidence by which I can find the activities were to facilitate or promote, for example, 'a trading channel which in a business sense had already been opened to Australia'.
4. Whilst mention of cognac, and eau-de-vie, appears throughout the evidence, when I consider all the evidence together, I am not satisfied that the Removal Opponent, or its predecessor, has applied the Trade Mark in relation to the Registered Goods in a manner amounting to genuine commercial use of the Trade Mark in the Relevant Period in Australia. I otherwise note that the evidence does not show use of the Trade Mark in relation to any other of the Registered Goods in the Relevant Period in Australia.
5. I confirm that there are otherwise no circumstances that were an obstacle to use of the Trade Mark during the Relevant Period established by the evidence.

1. Section 101(3) provides me with a broad discretion to not remove the Trade Mark from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. I must consider whether this discretion should be exercised in relation to the Registered Goods. However, the Removal Opponent need not establish 'exceptional circumstances'.[16]
2. Various factors are to be considered in applying s 101. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Federal Court observed of s 101(3) and the relevant factors:

[t]he following propositions are relevant to the exercise of this discretion:

(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. ...

(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

(5) 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.[17]

1. Briois declares that, 'the [Removal Opponent] and its predecessor have a strong reputation in producing alcoholic beverages including cognac, Pineau de Charentes, vodka, rum, and regional Charentais'.[18] Briois also offers evidence of awards received in 2017 at the International Wine and Spirit Competition. Guillou extracts an article from the BBC about the Removal Opponents' cognac. Guillou also suggests that as at the date of the declaration goods bearing the Trade Mark were available for sale on an Australian website. I also note that the Trade Mark has been registered since 2005.
2. The Removal Opponent provides little in the way of anything that would suggest that confusion would be likely to follow if I do not exercise the discretion, other than that it operates as a producer of some highly specific forms of alcoholic beverages. The evidence of use of the Trade Mark shown, even internationally, is minimal. The trade volume for demarcated goods of the Removal Opponent is not specified and there is insufficient evidence before me that might establish a reputation in the Trade Mark. It is difficult to weigh the impacts on the interests of the Removal Opponent. I am cognisant of the public interest in the Register reflecting those trade marks which are in use.
3. The Removal Opponent makes no submissions in respect of the discretion. Balancing the relevant considerations and noting all of the evidence before me, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Registered Goods.

1. The Removal Opponent has not established use of the Trade Mark in Australia in relation to any of Registered Goods during the Relevant Period. As such, protection of the Trade Mark should cease in relation to the Registered Goods.
2. Noting the appeal period, protection of the Trade Mark shall not cease until any appeal has either been discontinued or the applications for cessation of protection have been otherwise dealt with as the Court sees fit.

1. Ordinarily costs will follow the event. The Removal Applicant has been successful. Accordingly, I award costs against the Removal Opponent in accordance with Schedule 8 to the Regulations.

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

[3] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).

[4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

[5] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J) ('Oakley').

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

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

[8] [2010] HCA 15 [64] (French CJ, Gummow, Crennan and Bell JJ).

[10] Woolly Bull (n 6). See also, Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565 (O'Callaghan J).

[11] Settef SpA v Riv-Oland Marble Co (Vic) Pty Limited (1987) 10 IPR 402, 417-418 (McGarvie J).

[12] [1996] ATMO 53 (Hearing Officer Williams).

[15] Baxter, Woodhouse and Taylor Ltd v Windex Sportswear (1953) 23 AOJPTMD 2395, 2397-2398; and Camiceria Pancaldi & B Srl v Le Cravatte Di Pancaldi Srl [1999] ATMO 12 (Hearing Officer Williams).

[16] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).

[17] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).