2026 ATMO 43

Trade Marks Act 1995 (Cth) - application under section 92(4)(b) - removal sought for entire registration - evidence establishes that the trade mark has been used in good faith on some of the goods and services during the relevant period in a limited field - discretion not exercised - registration to be removed for the unused goods and services

1. On 21 February 2025, Adam Eden ('Applicant') filed an application under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] ('Removal Application') for the complete removal of the following registered trade mark in the name of Project Green Pty Ltd ('Opponent'):

Class 9: Computer software platforms, recorded or downloadable; Computer software (recorded); Computer programs, downloadable; Computer software applications (downloadable); Computer programs, recorded; Electronic publications (downloadable); Business programmes for computers; Data processing programmes; all of the aforementioned relating to the horticultural and environmental fields

Class 42: Computer software design; Updating of computer software; Maintenance of computer software; Computer programming; Computer software consultancy; Information technology (IT) consultancy; Provision of online non-downloadable software (application service provider); Design of computer databases; Providing information, including online, about design and development of computer hardware and software; Hosting of software as a service (SaaS); Web portal services (designing or hosting); all of the aforementioned relating to the horticultural and environmental fields

1. The Opponent has opposed the Removal Application, filing a Notice of Intention to Oppose on 15 April 2025 and a Statement of Grounds and Particulars ('SGP') on 9 May 2025. The Applicant filed a Notice of Intention to Defend on 13 June 2025.
2. The Opponent filed Evidence in Support ('EIS') on 18 September 2025. The Applicant did not file Evidence in Answer.
3. The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the EIS.

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:

(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 8 October 2020 and the removal application was filed on 21 February 2025. This requirement is therefore satisfied.
2. Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Mark in relation to the Registered Goods is the three year period ending on 21 January 2025 ('Relevant Period').
3. The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Mark in respect of any or all of the Registered Goods and 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.[5]
4. 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.[6]

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 Goods and Services to the satisfaction of the Registrar, the opposition to removal will not be established.
2. In Woolly Bull Enterprises Pty Ltd v Reynolds,[7] ('Woolly Bull') 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'.[8] 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,[9] 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'.[10] The fewer acts relied on the more solidly ought they to be established.[11]
3. Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[12] Similarly, bald assertions of use during the relevant period which are not supported by clearly dated documentary evidence should be afforded little weight.[13]
4. 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.[14]
5. Use in the course of trade means an actual dealing in the goods, an offer for sale of goods, or an intention to offer for goods for sale manifested through preparatory steps showing an objective commitment to use the trade mark.[15]
6. Use in good faith of a trade mark includes use of the trade mark with additions or alterations not substantially affecting its identity.[16] This has been interpreted to require that the two marks be substantially identical to each other.[17] The test for assessing substantial identity involves a side by side comparison of the two marks. The Court must be satisfied that, when viewed side by side, having regard to their similarities and differences, a total impression of similarity emerges from a comparison of the two marks.[18]
7. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, the Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is "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" (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[19]

1. 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 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)).

Craig Anthony Hosking, Founder and Director of the Opponent ('Hosking')

1. According to Hosking, the Opponent has provided arboriculture and environmental management services such as tree mapping, site audits, and open-space master planning to homeowners, businesses, and government agencies across Australia since 1998. In 2010, the Opponent launched a computer software platform for the mapping and management of trees and related assets under the Trade Mark ('Platform'). The Platform's key functionalities include an asset register displayed in list-view, a Geographic Information System Map to depict assets from a birds-eye perspective, and the automatic generation of downloadable reports. The Platform is used by government bodies, private industry and schools as an educational tool and can be customised for specific applications. Hosking annexes a copy of the Opponent's proposal for a customised version of the Platform to the Botanic Gardens of South Australia dated June 2021 for mapping benches and other physical installations which are available for memorial plaques where I note use of the trade mark on each of the pages, reference to the Opponent providing automatically generated reports by the system and reference to 'our software developers who turn the designs into functioning programs'.[20]
2. Hosking annexes a table of features on the Platform user interface where I note claimed use of the following on a number of pages, login screens and dashboards at different dates:
   • ('eden logo') in 2021; and
   • ('EDEN4 logo') in 2023, 2024 and 2025.
3. Hosking claims that the Platform is updated regularly by the Opponent and that the Opponent provides each of the Registered Goods and Services to its customers throughout Australia in the course of designing, deploying, maintaining and updating the Platform.
4. Hosking attests that other than use of the Trade Mark on the Platform user interface, the Trade Mark has been used by the Opponent in the course of providing the Registered Goods and Services on:
   • downloadable electronic publications including those created in connection with the Platform such as presentations, user guides, manuals, and reports; and
   • internal email correspondence relating to the Platform.

Hosking annexes a summary of use of the Trade Mark in the EDEN4 logo form on downloadable electronic publications namely presentations regarding the Platform in May, September, October and December 2023, User Manuals and Guides in 2023 and 2024 and Platform Generated Client Reports/Guides in February 2024 and 2025.

1. Hosking declares that the Opponent has used the Trade Mark in advertising and promotion of the Registered Goods and Services throughout the Relevant Period on:
   • the Opponent's websites at 'www.eden4.com.au' ('EDEN4 Website'), 'www.projectgreen.com.au' ('PG Website') and 'www.pgg.com.au' ('PGG Website') annexing Wayback Machine screenshots within the Relevant Period of the:
     • ➢ EDEN4 Website - six screenshots - where I note use of the Trade Mark and the EDEN4 logo and reference to software, tailored software, green asset management system, green asset reporting and analysis, accuracy in mapping and data collection and a data analytics tool;
     • ➢ PG Website - 6 screenshots - where I note use of the eden logo, (eden4), EDEN4 logo and the Trade Mark and reference to tailored green asset mapping and management system, Tree & Green Asset Management software, a partnership with Adelaide City Council, assessing vegetation in the Riverland for the Department of Infrastructure & Transport; and
     • ➢ the PGG Website - 12 screenshots - where I note use of the eden logo, (eden4), EDEN4 logo and the Trade Mark and reference to comprehensive software platform for tree mapping, data capture and management,

, , and

• the Opponent's social media accounts on Facebook, Linkedln and lnstagram annexing five posts in the Relevant Period which refer to the Trade Mark;
• billboards and signage installed in October 2023 at the Opponent's physical premises in Adelaide, South Australia annexing undated photographs of the signs showing the EDEN4 logo and copies of an invoice from Infinity Signs for production of these signs dated 16 October 2023; and
• promotional and brand materials worn by the Opponent's staff displaying the EDEN4 logo.

1. In summary the SGP claims that the Opponent has used the Trade Mark in good faith for the Registered Goods and Services in Australia in the Relevant Period.
2. The Opponent is taken to have rebutted the allegation of non use if it establishes that the Trade Mark, or the Trade Mark with additions or alterations not substantially affecting its identity, was used in good faith by the Opponent in relation to the Registered Goods and Services during the Relevant Period.
3. Hosking shows use on numerous occasions in the Relevant Period of the Trade Mark and the following trade marks: the eden logo, (eden4) and the EDEN4 logo. In my view the use of the eden logo, EDEN4 logo and the (eden4) mark are use of the Trade Mark with additions or alterations that do not substantially affect the identity of the Trade Mark. A side by side comparison reveals the obvious similarity in the marks in that each mark contains the word EDEN followed by the numeral 4. The only differences with the Trade Mark are that the eden logo is in a stylised font but recognisable as eden4, the EDEN4 logo has minimal stylisation while the (eden4) mark appears in lowercase and eden4 is enclosed in parenthesis. I am satisfied that, when compared side by side, the marks create an overall impression of similarity, and that the eden logo, EDEN4 logo and the (eden4) mark are substantially identical to the Trade Mark.
4. In broad terms, the Opponent's use is demonstrated on computer software related to horticultural mapping and horticultural asset management. I am satisfied that the Opponent has provided convincing proof of use of the Trade Mark in the Relevant Period in relation to all of the following Registered Goods and Services related to horticultural mapping and horticultural asset management :

Class 9: Computer software platforms, recorded or downloadable; Computer software (recorded); Computer programs, downloadable; Computer software applications (downloadable); Computer programs, recorded; Business programmes for computers; Data processing programmes

Class 42: Computer software design; Computer programming; Computer software consultancy; Provision of online non-downloadable software (application service provider); Hosting of software as a service (SaaS)

1. Hosking shows convincing proof of use in the Relevant Period of:
   • the eden logo on a proposal for a customised version of the Platform;[21]
   • the eden logo and EDEN4 logo on Platform user interfaces;[22]
   • the eden logo, (eden4), EDEN4 logo and the Trade Mark on websites;[23]
   • the Trade Mark on social media;[24] and
   • the EDEN4 logo on signage.[25]
2. The Registered Goods encompass 'Computer software platforms, recorded or downloadable; Computer software (recorded); Computer programs, downloadable; Computer software applications (downloadable); Computer programs, recorded'. These goods are fundamentally the same, as each comprises computer software; the sole distinction lies in whether the software is supplied on a physical medium or delivered digitally. I am therefore satisfied that the Opponent has used the Trade Mark in respect of:

Computer software platforms, recorded or downloadable; Computer software (recorded); Computer programs, downloadable; Computer software applications (downloadable); Computer programs, recorded; all related to horticultural mapping and horticultural asset management in

1. I am also satisfied that the Opponent has used the Trade Mark in respect of business programs for computers and data processing programmes related to horticultural mapping and horticultural asset management. These goods comprise software programs that enable organisations to perform horticultural mapping and horticultural asset management tasks and to collect, organise, analyse or output relevant data in the horticultural mapping and horticultural asset management fields. These functions reflect the capabilities of the Opponent's computer software.
2. The Registered Services also encompass a number of software related services such as 'computer software design, computer programming, computer software consultancy, provision of online non-downloadable software and hosting of software as a service (SaaS)'. The Opponent has demonstrated the provision of online non-downloadable software and customised versions of that software.[26] As the Opponent develops and customises its software for clients, I am satisfied that it is engaging in software design, computer programming, and the provision of computer software consultancy services related to horticultural mapping and horticultural asset management.
3. The inherent nature of a service is that it is an activity where one party provides services to another party in trade or commerce, usually for a fee. It is not an activity of providing a service to oneself.
4. The definition of service in the Australian Oxford Dictionary Online (2nd edition) is, inter alia:

noun 1. the act of helping or doing work for another or for a community etc.

and in the Macquarie Dictionary Online is, inter alia, 'an act of helpful activity and the supplying or supplier of any articles, commodities, activities etc required or demanded'.

1. In Adamson v New South Wales Rugby League Ltd, Wilcox J observed that:

As a reference to any standard dictionary will show, although the word "services" has a wide application, it imports always the notion of some assistance or accommodation being made available by one person to another.[27]

1. I am not satisfied that the Opponent has shown use of the Trade Mark on 'Updating and maintenance of computer software, information technology (IT) consultancy, design of computer databases or providing information, including online, about design and development of computer hardware and software and web portal services (designing or hosting); all of the aforementioned relating to the horticultural and environmental fields' ('Unused Services'). The Opponent has not shown that it provides the service of updating and maintenance of computer software to others as stand alone services. The remaining services each involve specialist expertise provided to others such as advising businesses on technology strategy, designing database structures, supplying expert guidance on hardware or software development, or creating and maintaining the underlying framework of a web portal. The evidence does not show that the Opponent has provided any of these services to third parties.
2. I am also not satisfied that the Opponent has shown use of the Trade Mark on downloadable electronic presentations ('Unused Goods'). The Opponent's user guides, manuals and reports are generated on the Platform but are ancillary to the Opponent's computer software. The software provides user guides and manuals which can be downloaded electronically and allows customers to generate reports. The Opponent has not shown that these user guides, manuals and reports are available or provided as stand alone electronic publications.
3. Further, I am also not satisfied that the Opponent's presentations are not ancillary to the Opponent's software. The Opponent has only provided screenshots of three presentations.[28] These screenshots do not show the entire presentation and therefore I am unable to ascertain whether the presentations are created in connection with the Platform and are therefore ancillary to the Platform, or whether they are stand alone electronic presentations. On the evidence, I cannot be satisfied that the Opponent has provided electronic presentations which are not merely ancillary to the Platform.
4. In conclusion, I find that the Trade Mark has been used by the Opponent in the Relevant Period in respect of the following subset of Registered Goods and Services:

Class 9: Computer software platforms, recorded or downloadable; Computer software (recorded); Computer programs, downloadable; Computer software applications (downloadable); Computer programs, recorded; Business programmes for computers; Data processing programmes; all related to horticultural mapping and horticultural asset management

Class 42: Computer software design; Computer programming; Computer software consultancy; Provision of online non-downloadable software (application service provider); Hosting of software as a service (SaaS); all related to horticultural mapping and horticultural asset management ('Subset')

and the Opponent has therefore rebutted the allegation of non use for this Subset. I also find that the Opponent has not rebutted the allegation of non use for the Unused Goods and Services.

1. Presently, the Registered Goods and Services of the Registration would be amended to delete the following goods and services:

Class 9: Electronic publications (downloadable); all of the aforesaid relating to the horticultural and environmental fields

Class 42: Information technology (IT) consultancy; updating of computer software; maintenance of computer software; design of computer databases or providing information, including online, about design and development of computer hardware and software and web portal services (designing or hosting); all of the aforesaid relating to the horticultural and environmental fields

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 Goods and Services or for the Used Goods and Services outside those related to horticultural mapping and horticultural asset management. 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 Goods and Services and the Used Goods and Services be limited to those related to horticultural mapping and horticultural asset management, I must consider whether it is appropriate to exercise discretion not to remove the Trade Mark for any of the Unused Goods and Services or to limit the scope of the Used Goods and Services.

1. The question to be asked is whether it is reasonable not to remove the Trade Mark for the Unused Goods and Services or to limit the scope of the Used Goods and Services, even though the Opponent has not established use of the Trade Mark during the Relevant Period in respect of any of the Unused Goods and Services or the Used Goods and Services outside the limitation of being related to horticultural mapping and horticultural asset management. 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.[29]
3. The discretion provided by this section is very broad. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[30] 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.[31]

1. Despite bearing the burden of persuasion, the Opponent has filed no submissions regarding the discretion nor has it furnished any cogent evidence that would favour the discretion being exercised. The SGP is silent on the matter of discretion. Hosking only contains a bald statement that losing its rights in the Trade Mark would detrimentally impact the Opponent's ability to operate the Platform and damage the ongoing relationships the Opponent has established with users of the Platform over the course of 15 years since launch. There is no evidence that this would be the case if the Registration were removed for the Unused Goods and Services or the scope of the Used Goods and Services is limited. In fact, given the breadth of the Used Goods and Services which are to remain in the Registration, even when limited to being related to horticultural mapping and horticultural asset management, in my view, removing the Unused Goods and Services and limiting the Used Goods and Services will not hamper the Opponent's ability to operate the Platform.
2. There is a public interest in the integrity of the Register, and I do not consider the public interest in this case is served by allowing the Trade Mark to remain registered for a wider scope of goods and services. I am therefore 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 Goods and Services or not to limit the Used Goods and Services to being related to horticultural mapping and horticultural asset management. As such, I decline to exercise the discretion.

1. The Opponent has partly established its opposition to the Removal Application. Accordingly, I direct that registration 2069744 be removed from the Register in respect of all the Unused Goods and Services and that the Used Goods and Services be limited to being related to horticultural mapping and horticultural asset management within one month from the date of this decision. It will remain registered for the goods and services listed below.

Class 9: Computer software platforms, recorded or downloadable; Computer software (recorded); Computer programs, downloadable; Computer software applications (downloadable); Computer programs, recorded; Business programmes for computers; Data processing programmes; all related to horticultural mapping and horticultural asset management

Class 42: Computer software design; Computer programming; Computer software consultancy; Provision of online non-downloadable software (application service provider); Hosting of software as a service (SaaS); all related to horticultural mapping and horticultural asset management

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. Neither party has been entirely successful in respect of the Removal Application. As such I have decided not to award costs.

[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').