Opponent: Lucy E Davis of Counsel instructed by Ashurst Australia.

Applicant: Angela McDonald of Counsel instructed by The IP House Lawyers

2026 ATMO 55

Trade Marks Act 1995 (Cth) - application under section 92 - removal sought for entire registration - evidence establishes that the trade mark has been used in good faith on some of the services during the relevant period - discretion not exercised - registration to be removed for the unused services

1. On 21 August 2024, The Entourage Effect Pty Ltd ('Applicant') filed an application under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth)[1] ('Removal Application') for the complete removal of the following registered trade mark ('Registration') in the name of Pharmacy Platform Pty Ltd ('Opponent'):

[2]

Class 35: Administration of consumer loyalty programs; Business data analysis; Business management; Market research; Organisation and management of customer loyalty programmes; Organisation and management of discount card loyalty schemes; Sales promotion through customer loyalty programmes (for others)

Class 44: Advisory services relating to pharmaceutical products; Health care; Health screening; Hygienic and beauty care for human beings; Medical assistance; Medical services; Optometry; Pharmacy advice; Pharmacy dispensary services; Pregnancy testing; Preparation of prescriptions by pharmacists; Provision of pharmaceutical information ('Registered Services')

1. The Opponent filed a Notice of Intention to Oppose the Removal Application on 25 October 2024 and a Statement of Grounds and Particulars ('SGP') on 25 November 2024. The Applicant filed a Notice of Intention to Defend the Removal Application on 24 December 2024.
2. On 3 April 2025, the Opponent filed Evidence in Support ('EIS'). The Applicant filed Evidence in Answer ('EIA') on 30 June 2025. The Opponent filed Evidence in Reply on 8 September 2025 ('EIR').
3. The parties were given the opportunity to request to be heard by written or oral submissions. Both parties requested an oral hearing by video conference. The Opponent filed written submissions on 27 February 2026 prepared by Lucy E Davis of Counsel instructed by Ashurst Australia. The Applicant filed written submissions prepared by Angela McDonald of Counsel and Claire Darby of The IP House Lawyers on 6 March 2026. I heard the matter in my capacity as a delegate of the Registrar of Trade Marks on 13 March 2026. At the hearing Lucy E Davis of Counsel instructed by Giulia Falvo of Ashurst Australia appeared on behalf of the Opponent (observing were Bronte Southgate of Ashurst Australia and Daniel Lo of the Opponent) and Angela McDonald of Counsel instructed by Claire Darby of The IP House Lawyers appeared on the Applicant's behalf. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.

1. The parties filed the following evidence in this matter:

Jessica Reyment, Corporate Counsel of DBG Health Pty Ltd, of which the Opponent is a wholly owned subsidiary[3] ('Reyment')

Eidan Havas, Chief Legal Officer of the Applicant ('Havas')

Richard Manthey, Head of Platform for Independent Pharmacies Australia Group Pty Ltd ('IPA'), parent company of the Opponent ('Manthey')

Second declaration of Jessica Reyment ('Reyment 2')

1. Section 92 relevantly provides (notes omitted):

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;

(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. Section 92(4)(b) is subject to s 93(2), which stipulates that a non-use application made under s 92(4)(b) may only be made after three years have passed from the date the particulars of the trade mark were entered into the Register. The particulars of the Trade Mark were entered onto the Register on 3 August 2020 and the Removal Application was filed on 21 August 2024. This requirement is therefore satisfied.
2. Section 92(4)(a) and (b) provide alternative grounds for removal.
3. To succeed under the s 92(4)(a) ground, which can be made at any time after the filing date of the trade mark,[4] the Applicant must establish two things:
   • that the trade mark was registered without an intention to use the trade mark in good faith; and
   • that there was no actual use (or no use in good faith) of the trade mark before one month prior to the date of application for removal.
4. To succeed under the s 92(4)(b) ground, the Applicant need only establish that the trade mark was not used, or not used in good faith, in the three-year period ending one month before the date of application for removal.
5. The relevant period during which the Opponent must establish use of the Trade Mark in relation to the Registered Services under the s 92(4)(b) ground is the three year period ending on 21 July 2024 ('Relevant Period').
6. In the event that use of the Trade Mark is shown during the Relevant Period, then the Removal Application will be defeated under both s 92(4)(a) and (b). However, if there is no use of the Trade Mark (or no use in good faith) in the Relevant Period, then s 94(4)(b) would be established, thereby negating any need for the Applicant to then establish whether there was an intention to use the Trade Mark at the date of filing under s 94(4)(a).
7. Therefore, if both grounds are raised, s 92(4)(a) effectively merges with s 92(4)(b) so that the Removal Application will depend entirely on whether or not there has been use.[5] Accordingly, for present purposes, I have limited my consideration below to the ground for removal under s 92(4)(b).
8. The Opponent bears the onus of rebutting an allegation of non-use[6] by establishing, on the balance of probabilities,[7] that it has used the trade marks in respect of any or all of the Registered Services identified in the Removal Application during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[8]
9. 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.[9]

1. It follows that unless the Opponent provides convincing proof of use of the Trade Mark in the Relevant Period in relation to the Registered Services to the satisfaction of the Registrar, the opposition to removal will not be established.
2. In Woolly Bull Enterprises Pty Ltd v Reynolds,[10] 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'. He said:

Where an overseas trader has in some way committed goods for export to Australia, eg, by actually shipping them or by earmarking them for export in some other way, there will be actual trade in the marked goods in Australia sufficient to show use of the mark here where the foreign goods have been offered for sale in Australia under the mark, though none have yet arrived here.[11]

1. 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,[12] but if a single act of use is relied upon then it should be established by 'if not conclusive proof, at any rate overwhelmingly convincing proof'.[13] The fewer acts relied on the more solidly ought they to be established.[14]
2. The 'use' in good faith required to be demonstrated by the Opponent is 'use as a trade mark'. Section 17 defines a trade mark as 'a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person'. Therefore, use as a trade mark is use of the sign as a badge of origin.[15]
3. Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant non use period.[16] Similarly, bald assertions of use during the relevant non use period which are not supported by clearly dated documentary evidence should be afforded little weight.[17] Thus, if an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims.
4. Section 101 provides the Registrar with the discretion to remove the Trade Mark from the Register in respect of any, or all, of the goods and services for which it is registered. Relevantly, the section also provides:

(3) 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.

(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

1. Reyment claims that the Opponent is a wholly owned subsidiary of DBG Health Pty Ltd, but in Reyment 2 clarifies that the Opponent is a subsidiary and not a wholly owned subsidiary.
2. Reyment states that since at least 24 December 2019 the Opponent has been developing loyalty card programs to operate under the Trade Mark and provides undated samples of loyalty cards in use by the Opponent's member pharmacies such as Advantage Pharmacy, Chemist Discount Centre, Pharmacy Alliance and Catalyst throughout Australia which appear below:

1. Reyment declares that the Opponent has also developed loyalty programs for at least 250 independent pharmacies under the Trade Mark, listing three domains where the Opponent's branded loyalty programs are claimed to currently operate, namely:
   • amcal.mypharmacyrewards.com.au;
   • discountdrugstores.mypharmacyrewards.com.au; and
   • pharmacistadvice.mypharmacyrewards.com.au.
2. Reyment provides a snip from the Opponent's website at 'www.mypharmacyrewards.com.au' ('Opponent's Website') dated in March 2021, being before the Relevant Period, which appears below:

1. Reyment states that the Opponent was engaged in developing a loyalty card program for Michael O'Reilly Pharmacy, providing a depiction of a draft loyalty card dated 27 August 2024, after the Relevant Period. The Trade Mark features on the back of the card. Also, Reyment states the Opponent, after the Relevant Period, has developed a loyalty program for IPA and began rolling out the program to IPA pharmacies in October 2024. An undated screenshot of a presentation slide detailing features of the Opponent's loyalty rewards program is provided, where I note the Trade Mark features on the slide.

1. Havas states that since May 2021, the Applicant and its group of companies have grown to distributes Australia's largest range of alternative medicine brands. One of the Applicant's brands is the word trade mark MIPHARMACY which has been registered in Australia in classes 30 and 34 since November 2024. The Applicant has also applied for the following trade marks against which, after examination, the Trade Mark has been cited under s 44:

5, 9, 16, 42 and 44, including various pharmaceutical preparations and substances and pharmacy dispensary services

5, 9, 16, 42 and 44, including various pharmaceutical preparations and substances and pharmacy dispensary services

1. Manthey states that IPA is the parent company of both the Opponent and Magikos Marketing Pty Ltd (trading as Know It All) ('KIA')[18] and that IPA is also a customer of the Opponent. Manthey annexes extracts from the Australian Securities & Investments Commission register ('ASIC') for IPA, the Opponent and KIA. I note IPA is one of many shareholders but individually owns the majority of shares in both the Opponent and KIA, the ultimate holding company of the Opponent is Arrotex Pharmaceuticals Pty Ltd and the four directors of IPA, KIA and the Opponent are the same.
2. Manthey attests that KIA developed an online pharmacy services and loyalty platform which pharmacies could use to gain insights into their business' performance through various data analytics and reporting ('KnowItAll Platform'). By December 2019, IPA, KIA and the Opponent chose the Trade Mark for the KnowItAll Platform and in January 2020, the Opponent authorised KIA to apply to register the business name MY PHARMACY REWARDS ('Business Name'), as KIA was the entity which would provide the KnowItAll Platform under the Trade Mark.
3. According to Manthey, the Opponent's Website was launched in August 2020 which in addition to the KnowItAll Platform, offers white label loyalty card program services, including administration, organisation and management services for consumer loyalty programs, market research services, sales promotion and customer communication services to pharmacies ('Loyalty Services').[19] Manthey annexes:
   • Wayback Machine extracts of the Opponent's Website, one dated 7 August 2020 (before the Relevant Period) and five dated in the Relevant Period between 17 January 2022 and 16 March 2024. The extracts differ only in a cartoon which appears on the home page. I note the use of the Trade Mark on each home page and the following text 'My Pharmacy Rewards is a pharmacy marketing and loyalty company. We provide the platform and prepare the communications to market your brand directly to your customers' and 'We are a while label loyalty card program. We provide the platform and set the communications to get your brand to market'. I also note the copyright notice states 'My Pharmacy Rewards';[20]
   • marketing materials being a draft of an internal Q&A document displaying the Trade Mark dated June 2020, being before the Relevant Period, explaining the change in branding for the Services from KnowItAll to MY PHARMACY REWARDS and a 'new features' document displaying the Trade Mark dated August 2020, again before the Relevant Period, explaining the release of new features of the Services; and
   • User Guides for setting up a My Pharmacy Rewards account, a My Pharmacy Rewards Store Manager User Guide and My Pharmacy Rewards Loyalty Points User Guide claimed to be issued to a new pharmacy customer by email in October 2021. The email begins 'Just a reminder that you will be receiving an email from Okta today, which will allow you to set up access to your new online loyalty portal - My Pharmacy Rewards'. I note the Store Manager User Guide makes reference to the scope of the Opponent's services as 'My Pharmacy Rewards is our new loyalty platform where you can go to manage your customer database and access reporting. The Loyalty section allows you to search for members, update members' information, merge members accounts, view a member's transaction history, manage loyalty exclusions and more. The Reporting section will give you access to your Sales, Loyalty and Inventory reports. The URL to access My Pharmacy Rewards is: 'https://app.mypharmacyrewards.com.au'. The Trade Mark appears throughout the documents including and the following at the bottom of many pages of the user guides . I also note that the help contact is under the title 'knowITall Help Desk'.
4. Manthey claims that the Services are provided by KIA to pharmacy customers through various subdomains of the Opponent's Website such as https://app.mypharmacyrewards.com.au. Once logged into a customer's subdomain, customers will encounter the initial splash page and can access the Services via the link to manage their consumer loyalty programs and member databases. Manthey annexes an undated printout from this initial splash page showing this button on the website 'https://epica.au/hub' (which is one of many buttons on this website including a button) and printouts of the 'My Pharmacy Rewards Portal' with details of one member pharmacy client which joined in the Relevant Period together with details of their transaction history in and after the Relevant Period. The portal home screen shows the Trade Mark.
5. Manthey states that the Opponent has also permitted IPA to use the Trade Mark to promote IPA's consumer loyalty program. Manthey annexes screenshots depicting reports for IPA for August and September 2025 through a button called REPORTAL on the website 'https://epica.au/hub'. The Reportal page displays the trade mark . The Reportal program provides the following loyalty related data:

The screenshots showing 'Loyalty Sales Analysis' provide data from July 2024 to August 2025.

1. Manthey annexes screenshots of IPA's Facebook and Instagram pages which are undated or dated after the Relevant Period and IPA's website at 'www.independentpharmacies.com.au' dated after the Relevant Period showing use of the Trade Mark for the customer loyalty program.
2. Manthey provides the number of, and charts showing, retail pharmacies and pharmacy groups, consumers in customer loyalty programs and interactions between the pharmacies and these consumers using the Services between 1 January 2021 and 30 June 2025. I note relatively steady growth over these years.
3. Reyment 2 annexes an ASIC extract for Pharmacy Alliance Investments Pty Ltd ('Pharmacy Alliance')[21] which shows that DBG Consolidated Holdings Pty Ltd is the ultimate holding company of Pharmacy Alliance and that DBG Health Pty Ltd, Arrow Pharmaceuticals Pty Ltd and MS (Vic) Nominees Pty Ltd are equal shareholders of Pharmacy Alliance. Two directors of Pharmacy Alliance are the same as two of the directors in IPA, KIA and the Opponent and the registered address of Pharmacy Alliance is the same as IPA, KIA and the Opponent.

1. Prior to consideration of this matter, the Applicant has objected to the entirety of Manthey claiming it is not in reply to the EIA and is an attempt to rectify deficiencies in the Opponent's EIS. In particular, the Applicant submits that:
   • the EIA did not raise any issue in relation to the Opponent's evidence of use of the Trade Mark nor identify deficiencies in the Opponent's evidence;
   • Manthey is an attempt to rectify the deficiencies in the EIS and goes to the fundamental question of whether the Trade Mark has been used in the Relevant Period;
   • the evidence in Manthey could have been filed at the EIS stage and is effectively EIS filed out of time. The Opponent has side stepped obtaining an extension of the evidence deadline;
   • no reason has been given by the Opponent as to why the evidence could not be filed at the EIS stage;
   • the Applicant is prejudiced as it cannot respond to Manthey; and
   • much of Manthey lacks probative value as most of the evidence is undated or dated after the Relevant Period.

1. At the hearing the Opponent was given the opportunity to reply to the objection raised by the Applicant to the Manthey. The Opponent submitted that:
   • the rules of evidence do not apply under Reg. 21.15(4);
   • under Reg. 21.19, if information that is available to the Registrar is relevant to proceedings before the Registrar, the Registrar can take the information into account in making a decision in the proceedings;
   • Manthey is probative;
   • it is not in the public interest not to consider Manthey; and
   • while the Applicant alleges prejudice, no prejudice has been identified and nor has the Applicant identified what steps it would have taken if Manthey had been filed earlier. Further no issue was raised by the Applicant to Manthey in the 5 months prior to the hearing.
2. The Opponent made further submissions as to the probative value of Manthey, which included submissions as to the Opponent's use of the Trade Mark in the Relevant Period in the EIS and EIR. The submissions also referred to whether there was authorised use of the Trade Mark.
3. The Opponent submitted that Manthey supports genuine use of the Trade Mark in the Relevant Period in respect of a subset of the Services as:
   • Manthey is an employee of IPA and IPA is a customer;
   • Annexure C to Manthey shows consistent use of the Trade Mark on the Opponent's Website before and during the Relevant Period and also use consistent with Reyment;[22]
   • Annexure C refers to the Opponent's services as a marketing and loyalty company providing the platform and preparing the communications to market their customers brands and explains how the services are provided;
   • Annexure F to Manthey provides a copy of an external email sent by KIA which points to the Opponent's Website and attaches user guides. The email is consistent with a bulk email to customers;
   • the Opponent also provides pharmacy advice as it provides advisory services in relation to pharmacy; and
   • the use of the Trade Mark by KIA is authorised use and therefore use by the Opponent. KIA and the Opponent have the same four directors and are wholly owned by IPA, which also has the same four directors. The directors are responsible for the companies and owe fiduciary duties to the companies. The directors are acting with a unity of purpose, relying on Trident Seafoods Corporation v Trident Foods Pty Ltd.[23]
4. In reply the Applicant submitted that:
   • there is a greater public interest in adherence to strict deadlines after the enactment of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) and if they are not met, an explanation must be provided;
   • the Applicant has no right of reply to Manthey and would need an extension of time to do so;
   • if Manthey is not taken into account, the Opponent could appeal a decision and therefore natural justice is not affected;
   • there is no probative value in Manthey as he is not a director or employee of the Opponent;
   • there is no explanation as to how Mr Manthey's role allows him to give evidence as he is employed by IPA and therefore has no direct knowledge of the activities of the Opponent. Mr Manthey also makes claims regarding the activities of the Opponent, IPA and KIA which occurred prior to his employment with IPA;
   • there is no reference to the Opponent in the email and user guides in Annexure F to Manthey;
   • the arguments regarding authorised use are based solely on the ASIC searches and inferences. There is only an indirect relationship between IPA, KIA and the Opponent because of their common directorship. There is no evidence of any control of the Trade Mark in Manthey;
   • there is no use of the Trade Mark on pharmacy advice. Pharmacy advice is a medical advice service provided by pharmacies or pharmacists to their customers in relation to pharmaceutical products and services. It is not a service of providing business advice to a pharmacy. The Nice Classification for s 44 relates to 'Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services'; and
   • if Manthey is given any weight and KIA's use is authorised use, the Opponent's evidence of use of the Trade Mark is limited to a pharmacy customer loyalty program and does not extend to any class 44 services or to business data analysis services, business management services or market research services in class 35.
5. In reply to the Applicant's submissions, the Opponent explained that Manthey was not filed as EIS as the EIS was prepared internally by Ms Reyment, as corporate counsel of DBG Health Pty Ltd, without legal advice.

1. EIR is an Opponent's opportunity to reply to an Applicant's EIA. By its very definition, EIR should be limited to replying to issues canvassed in the EIA. EIR should not be treated as an opportunity to rectify deficiencies in an Opponent's case. In this respect, I refer to Optech International Ltd v Buxton Micrarium Ltd where the Registrar's Delegate stated:

The other material has, in my view, been provided in an attempt to rectify deficiencies in the opponent's case which have been identified by the applicant, rather than to contradict the applicant's evidence.[24]

1. Further, if an opponent has a case, they should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case. As expressed by Graham J in Ernest Scragg & Sons Ltd's Application:

To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case. The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case. If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished.

Here, in my judgment, it should have been obvious to the Opponent from the start that if they were going to succeed ... they must in the first instance put in the evidence which they are now seeking to put in reply,

When the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent's case, seek to adduce additional evidence to strengthen his own case.[25]

1. Although there are three evidence stages, each with a specific purpose, unlike the courts the 'Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate' under Reg 21.15(4). In the words of Lord Denning MR:

A tribunal (of this kind) is master of its own procedure, provided that the rules of natural justice are applied. ... Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law.[26]

1. In _R v Deputy Industrial Injuries Commissione_r Diplock LJ commented on the practicalities of not being bound by the rules of evidence:

The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material which, as a matter of reason, has some probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue.[27]

1. The Registrar is not, as a matter of law, compelled to exclude evidence which does not properly constitute evidence in reply. Hence, where evidence is filed in time it is generally objected to on the basis of its probative value rather than admissibility. In Malibu Boats West Inc v Catanese, Finkelstein J stated:

It should be borne in mind, however, that the proceeding before the registrar was not a curial proceeding and many of the rules that are applicable to courts have no application. That proceeding was an administrative proceeding before a person exercising a statutory function. The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the registrar is not entitled to disregard evidence which bears upon that question.[28]

1. In Emory University v Biochem Pharma Inc, the Deputy Commissioner of Patents stated:

It is in the public interest that all evidence be put before the commissioner so that the opposition is decided based on a consideration of all relevant facts.[29]

1. In Orica Australia Pty Ltd v Dyno Nobel Inc, the Commissioner's Delegate observed:

... an administrative decision-maker is entitled to act on any material that is logically probative (Minister for Immigration & Ethnic Affairs v Pochi [1980] FCA 85; (1980) 31 ALR 666; 1A IPR 708; 44 FLR 41), and thus the Commissioner is not as a matter of law compelled to exclude evidence which is not properly in reply. This is certainly the approach advocated in Snap-On Technologies Inc v Beissbarth GmbH [2000] APO 52 (3 August 2000):

... I am concerned that long debates at the substantive hearing about whether evidence is admissible could detract from the substantive issues, and I believe it would be more administratively efficient if both parties come to the substantive opposition with all material. From the decision in RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd (1999) 48 IPR 443 I note that the Commissioner has an inquisitorial role in an opposition. While she must allow the parties natural justice to reply to evidence, she is not bound by the rules of evidence. Reflective of this, the Commissioner even has the power under regulation 5.11 to consider documents in an opposition that are not part of the evidence. In my view, the key question to consider is "how relevant is this material?" rather than "is it strictly in reply?"[30]

1. While these two latter cases were patent oppositions, the principles equally apply to a trade mark opposition as both are administrative proceedings before a person exercising a statutory function.
2. I agree with the Applicant that Manthey is not EIR and the Opponent has not submitted otherwise. In my view, Manthey certainly appears to be an attempt by the Opponent to rectify deficiencies in the Opponent's case and I consider the evidence in Manthey could have been provided earlier in the three month EIS period, given that relevant business records, ASIC information, and website data existed and were readily accessible at the EIS stage.
3. However, I do not accept the Applicant's submission that Manthey should be disregarded in its entirety. While parts of Manthey, such as undated evidence and evidence dated before or after the Relevant Period do not assist in establishing use of the Trade Mark in the Relevant Period, other parts of Manthey are prima facie relevant. In particular, paragraphs [2], [7], [10] - [14], [16] and [17] and Annexures A, B, C, F, G and H address matters that are central to a proper determination of this opposition. Their probative value is significant and given the deficiencies in the EIS, which contains no evidence dated in the Relevant Period, without Manthey, the Opponent's case would likely fail.
4. If the Trade Mark was used in good faith by the Opponent in the Relevant Period, there is no public interest served by its removal. I also note that if I decline to consider Manthey and decide the Trade Mark should be removed, this raises the possibility of an appeal to the Federal Court. There are obvious cost and efficiency benefits to both the parties and the public in a matter being decided at first instance before the Registrar rather than a court. This is a further compelling reason to consider Manthey, as doing so reduces the likelihood of unnecessary escalation to litigation.
5. Conversely, I must consider whether Manthey should be excluded given that it is not EIR and could readily have been filed much earlier as part of the EIS. Further, there is a broader concern that allowing evidence to be filed which is not EIR may encourage parties to supplement inadequate EIS material in future proceedings and depart with the process which is set down by the Act and Regulations.
6. On balance, I find that the probative value of Manthey, the public interest in determining the matter based on all relevant material, and the potential consequences of declining to consider Manthey, are sufficiently persuasive and outweigh the reasons against its inclusion. The balance of convenience lies with the Opponent, who risks losing statutory rights in a trade mark that appears to have been used. In these circumstances, I will take Manthey into account.

1. In summary, the SGP claims that on the day the Trade Mark was filed, the Opponent had an intention in good faith to use or authorise the use of the trade mark in Australia, and did use or authorise the use of the Trade Mark in Australia in good faith in the Relevant Period in respect of the Services.
2. The Opponent submits that the EIS and EIR clearly establish use of the Trade Mark in the Relevant Period in respect of all of the Services in class 35 and pharmacy advice in class 44 through the ongoing promotion of customer loyalty and pharmacy analytics services by the Opponent and KIA including providing these services to IPA.
3. Having regards to paragraphs [7], [10] to [14], [16] and [17] and Annexures B, C, F, G and H in Manthey ('Paragraphs and Annexures'), I am satisfied that Manthey establishes use of the Trade Mark in the Relevant Period for the following subset of class 35 services:

Administration of consumer loyalty programs; Organisation and management of customer loyalty programmes; Organisation and management of discount card loyalty schemes; Sales promotion through customer loyalty programmes (for others) ('Used Services').

1. The Paragraphs and Annexures clearly show use of the Trade Mark in the Relevant Period in the:
   • Wayback Machine extracts of the Opponent's Website;
   • User Guides for setting up a My Pharmacy Rewards account, a My Pharmacy Rewards Store Manager User Guide and My Pharmacy Rewards Loyalty Points User Guide issued to a new pharmacy customer by email in October 2021; and
   • printouts of the My Pharmacy Rewards Portal with details of one member pharmacy client which joined in the Relevant Period together with details of their transaction history in and after the Relevant Period.
2. Further there has been relatively steady growth of retail pharmacies and pharmacy groups, consumers in customer loyalty programs and interactions between the pharmacies and these consumers using the Used Services between 1 January 2021 and 30 June 2025.[31]
3. I am, however, not satisfied that there has been any use of the Trade Mark in respect of 'business data analysis, business management or market research'. I find that any business data analysis, business management or market research services provided by the Opponent are merely ancillary to the Used Services. Such business data analysis, business management and market research services are not stand alone services and if they are provided to consumers, they are only provided as part of the Opponent's consumer loyalty programs. For example, analysis of loyalty sales by the Reportal platform.
4. I am also not satisfied that there has been any use of the Trade Mark in the Relevant Period (or before or after this period) in respect of any of the class 44 services and in particular pharmacy advice.[32] While pharmacy services are classified in class 44, this classification is not a limiting factor. Classification is merely an administrative tool and a class for particular goods or services is not decisive as to the scope of a given registration.[33]
5. The Opponent's contention that 'pharmacy advice' encompasses advisory services rendered to pharmacies is misconceived. The proper inquiry is directed to the language of the specification itself and how that wording would be understood from a business and commercial point of view. When the phrase 'pharmacy services' is interpreted from a business and commercial point of view, it cannot plausibly be read as extending to all services that might be provided to a pharmacy. If the Opponent's interpretation were correct, the term would capture an unlimited range of services, such as business consultancy for pharmacies, interior design services for pharmacy fit‑outs, insurance brokerage for pharmacies, or any other general professional services, merely because a pharmacy is the end customer. Such construction would yield an unworkable and absurd result.
6. Applying a business and commercial point of view, 'pharmacy advice' would be understood as advice given by a pharmacist or pharmacy professional to a consumer regarding medicines, health products, treatments, or other consumer‑facing pharmacy offerings. This interpretation aligns with the typical activities performed by a pharmacy and reflects how the public, and indeed traders in the sector, would understand the term.
7. In conclusion, I am not satisfied that the Trade Mark has been used in respect of business data analysis, business management or market research services in class 35 or any services in class 44 ('Unused Services') but I am satisfied that the Trade Mark has been used in the Relevant Period in respect of the Used Services.

1. I must next determine whether it has been the Opponent who has used the Trade Mark.
2. I am satisfied that the evidence in Manthey shows that the Opponent itself has used the Trade Mark in respect of the Used Services on the Opponent's Website within the Relevant Period.
3. Manthey attests that KIA developed the KnowItAll Platform and KIA registered the business name MY PHARMACY REWARDS, as KIA was the entity which would, did and does provide the KnowItAll Platform under the Trade Mark. The User Guides annexed to Manthey[34] show the Trade Mark including and at the bottom of many pages . The help contact is under the title 'knowITall Help Desk'. Manthey also states that the Opponent has permitted IPA to use the Trade Mark to promote IPA's consumer loyalty program. Based on the above, I am also satisfied that KIA used the Trade Mark in the Relevant Period. However, in order for this use to be considered use by the Opponent, KIA's use must be authorised by the Opponent.
4. Section 7(3) states that 'authorised use' of a trade mark is considered to be use of the trade mark by the registered owner, for the purposes of the Act.
5. Section 8 provides:

Definitions of authorised user and authorised use

(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3) If the owner of a trade mark exercises quality control over goods or services:

(a) dealt with or provided in the course of trade by another person; and

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b) the owner of the trade mark exercises financial control over the other person's relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

1. Control is a fundamental aspect of authorised use. Determination of actual control is 'a question of fact and degree'.[35] It is clear from the wording of s 8(5) of the Act that 'quality control' and 'financial control' are non-exhaustive examples of the types of control required to establish authorised use.
2. In Trident Seafoods Corporation v Trident Foods Pty Limited ('Trident'), the company that owned the trade mark was a wholly owned subsidiary of the company that used the trade mark. Further, given the corporate relationship between the entities, their common directors and shared processes, evidence of actual control over use of the trade mark was not required. As stated by the Full Court:

...In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge's view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen's use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen's use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen's directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. This is not a case like Lodestar in which there was no relationship between the owner and user of the marks beyond a licence. This case is at the other end of the spectrum. As Trident Foods submitted, it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand. The fact that this must also have been Manassen's purpose simply confirms the unity of purpose between the corporate entities. But unity of purpose is not inconsistent with the existence of control in a case such as the present.[36]

1. The ASIC extracts for IPA, the Opponent, KIA and the business name in Manthey,[37] and the ASIC extracts for the Opponent and IPA in Reyment 2,[38] show the relationship between these companies namely that IPA individually owns the majority of shares in both the Opponent and KIA, the four directors of IPA, KIA and the Opponent are the same and KIA owns the Business Name. Further, the registered address for all three companies is the same.
2. The nature of the corporate structure of the Opponent, KIA and IPA is such that it can be inferred that the companies operated with a unity of purpose and that any use of the Trade Mark by KIA was directed by the common directors. The directors of IPA, KIA and the Opponent had obligations to ensure the maintenance of the value in the Trade Mark. For practical purposes, the Opponent controlled the use of the Trade Mark by KIA within the meaning of s 8 of the Act and KIA's use of it can be regarded as use by the Opponent (s 7(3)). I am therefore satisfied that there was authorised use of the Trade Mark within the Relevant Period.
3. In conclusion, I am satisfied that the Opponent's evidence shows use of the Trade Mark for the Used Services in Australia in the Relevant Period, being the following subset in class 35:

Administration of consumer loyalty programs; Organisation and management of customer loyalty programmes; Organisation and management of discount card loyalty schemes; Sales promotion through customer loyalty programmes (for others)

and the Opponent has therefore rebutted the allegation of non use for the Used Services.

1. Presently, the Registered Services would be amended to delete Class 44 and the following services 'Business data analysis; Business management; Market research' in class 35.

1. For the sake of completeness, I note the Opponent has not provided evidence of any circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Mark for the Unused Services. Accordingly, I find no case under s 100(3)(c) has been established.
2. Given I have decided that the Trade Mark be removed for the Unused Services, I must consider whether it is appropriate to exercise discretion not to remove the Trade Mark for any of the Unused Services.

1. The question to be asked is whether it is reasonable not to remove the Trade Mark for the Unused Services, even though the Opponent has not established use of the Trade Mark during the Relevant Period in respect of any of the Unused Services. I must be positively satisfied that it is reasonable that the Trade Mark should not be removed or limited.
2. The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[39]
3. The discretion provided by this section is very broad. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[40] the Court made the following observations regarding the discretion under s 101(3):

The 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.[41]

1. The Opponent submits that even if non-use is established, the Registrar's discretion should be exercised in the Opponent's favour to retain the Trade Mark for all the Registered Services for the following reasons:
   • if the Unused Services are removed, this would lead to a greater likelihood of confusion if the same or similar mark was used by a third party. It is particularly relevant that all of the Registered Services relate to services that are or can be offered from a pharmacy and pharmacy customers are exposed to the Trade Mark as part of the loyalty program;
   • the Opponent has a reputation in the Trade Mark arising from its promotion and sale of loyalty programs for over five years to a large audience of pharmacies and those pharmacies' customers, including before and after the Relevant Period such that use of the Trade Mark by a third party may cause confusion;
   • the Delegate should exercise their discretion to avoid a fragmentation of ownership of the Trade Mark for similar services;
   • the Applicant has not identified any prejudice it will suffer by the retention of the Class 35 services; and
   • the Opponent and KIA continue to provide services to pharmacies (including member pharmacies).
2. The Applicant submits that the discretion should not be exercised to retain the Unused Services for the following reasons:
   • there is no risk of confusion if a third party, such as the Applicant were to obtain registration of a similar mark;
   • the Opponent's evidence does not establish a reputation in the Trade Mark sufficient to cause confusion in the marketplace;
   • the Applicant's applications are blocked by the Trade Mark in relation to the class 44 services; and
   • removal of the Trade Mark for some of the Registered Services will not cause fragmentation of ownership as class 44 services are not similar to customer loyalty programs.
3. On the material before me, I am not satisfied that the Unused Services bear any substantive similarity to the Used Services or that there is any real likelihood of consumer confusion. In the absence of any overlap or point of connection between the respective services, I am not persuaded that consumers would be likely to assume a common commercial origin. Accordingly, the evidence does not support a real likelihood of consumer confusion.
4. I agree with the Applicant that the Opponent's evidence does not establish a sufficient reputation in the Trade Mark to suggest that use of a similar mark for the Unused Services would cause deception or confusion. It does not follow that there is a risk of consumer confusion solely because the customers may be the same for the broad range of class 44 services and pharmacy services. As a consequence, removal of the Trade Mark for the Registered Services will not cause fragmentation of ownership as these services are not similar to the Used Services.
5. The Applicant's private interests in this matter are clear. It has applied to register two trade mark applications in, inter alia, class 44 and they are being blocked by the Trade Mark.
6. While the Applicant has not identified any prejudice it will suffer by the retention of the Unused Services in class 35, there is a public interest in maintaining the integrity (or 'purity') of the Register which generally demands that unused trade marks be removed. 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.[42]

1. On balance, in light of the above considerations, I am unpersuaded that the Opponent has provided justification to allow the retention of the Trade Mark on the Register for all or any of the Unused Services. Given the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove the Trade Mark for the Unused Services.

1. The Opponent has been partially successful in its opposition in relation to the Used Services. The ground for removal under s 92(4)(b) of the Trade Mark has been established in respect of the Unused Services.
2. I direct that registration 2057720 be partially removed from the Register for all the Registered Services except:

Class 35: Administration of consumer loyalty programs; Organisation and management of customer loyalty programmes; Organisation and management of discount card loyalty schemes; Sales promotion through customer loyalty programmes (for others)

1. In the event of an appeal from this decision, the Registration shall not be restricted until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the registration be dealt with as the Court sees fit.

1. Both parties have sought their costs. Section 221 confers upon the Registrar a discretionary power to make an award of costs in respect of matters and in amounts provided for in the Regulations. Regulation 21.13(1)(b) provides that the Registrar has a discretionary power in relation to the award of costs and costs may be awarded as the Registrar 'considers appropriate'.
2. The Opponent's filing of Manthey, which did not constitute EIR, was the direct cause of the Preliminary Matter arising. Consequently, the Applicant was required not only to prepare submissions directed to that Preliminary Matter but also to develop alternative sets of submissions contingent upon whether Manthey, in whole or in part, would be taken into account in the substantive opposition. This situation would have resulted in unnecessary additional expense and inconvenience to the Applicant. In these circumstances, and notwithstanding that each party enjoyed partial success in the substantive opposition, I consider it appropriate to award costs against the Opponent in accordance with the amounts prescribed in Schedule 8 of the Regulations.

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

[2] Endorsement recorded 'It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background'.

[3] Correction made in Reyment 2 that the Opponent is a subsidiary of DBG Health Pty Ltd and not a wholly owned subsidiary.

[5] This interpretation has been well accepted in respect of removal applications against trade marks with a filing date before 19 February 2019, namely those prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3. See, for example, Moores MDP Pty Ltd v Moore Stephens International Licensing [2023] ATMO 86, [23] (Hearing Officer Wilson); Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173, [9] (Hearing Officer Berger); Bangkok Broadcasting & TV. Co Ltd v Seven Network (Operations) Limited [2021] ATMO 78,[21] (Hearing Officer Smith).

[7] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52.

[9] [1998] FCA 440 (citations omitted).

[10] [2001] FCA 261, [16].

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

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

[16] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer R Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer K Brown).

[17] Aristedes Maniatis v Roche Diagnostics GmbH [2022] ATMO 59, [26] (Hearing Officer Smith); Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno).

[18] This can be contrasted with the claims of Ms Reyment in Reyment and Reyment 2 that the Opponent is a subsidiary of DBG Health Pty Ltd, even though the Australian Securities & Investments Commission register extracts for the Opponent provided in Reyment 2 at Annexure JR2-1 show that IPA is the parent company and a controlling shareholder of the Opponent, Given this, the Opponent cannot be a subsidiary of DBG Health Pty Ltd.

[19] The KnowItAll Platform and Loyalty Services will be collectively referred to as the 'Services'.

[20] The business name owned by KIA. Manthey Annexure B.

[21] Ms Reyment also annexes ASIC extracts for the Opponent and IPA which I have already referenced in my summary of Manthey.

[23] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

[24] [1993] APO 55; (1993) 28 IPR 649, 654 (Hearing Officer Herald).

[25] [1972] RPC 679, 682.

[26] TA Miller Ltd v Minister for Housing & Local Government [1969] RPC 91, 93.

[27] [1965] 1 All ER 81, 94.

[28] [2000] FCA 1141 [24].

[29] [1997] APO 46 (Deputy Commissioner J Werner).

[30] [2003] APO 13 (Hearing Officer Haggar).

[32] The Nice Explanatory Note for class 44 in the Nice Classification online accessed 20 March 2026 states, inter alia, 'This Class includes, in particular 'pharmacy advice and preparation of prescriptions by pharmacists'.

[33] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [132] (Yates, Stewart and Rofe JJ).

[35] [2016] FCAFC 92, [98] (Besanko J).

[36] [2019] FCAFC 100, [45] (Reeves, Jagot and Rangiah JJ).

[39] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

[40] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[41] Ibid [153] (emphasis altered) (citations omitted).

[42] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).