Non-Use Cancellation of MACBANK: Does Buying Google Keywords and Holding Redirect Domains Count as Trade Mark Use Under the Trade Marks Act 1995 (Cth)?
Based on the authentic Australian judicial case 2025 ATMO 38, Macquarie Bank Limited v Macarthur Credit Union Ltd (Opposition to removal of trade mark no 922504 “MACBANK” and opposition to registration of trade mark application no 2133339 “THE MACBANK”), this article disassembles the Court’s judgment process regarding evidence and law. It transforms complex judicial reasoning into clear, understandable key point analyses, helping readers identify the core of the dispute, understand the judgment logic, make more rational litigation choices, and providing case resources for practical research to readers of all backgrounds.
Chapter 1: Case Overview and Core Disputes
Basic Information
Court of Hearing: IP Australia, Office of the Registrar of Trade Marks, Oppositions and Hearings (Decision of a Delegate of the Registrar)
Presiding Judge: Delegate Timothy Brown (Hearing Officer)
Cause of Action:
1) Non-use removal application under s 92(4)(b) of the Trade Marks Act 1995 (Cth), and opposition to removal under s 96
2) Opposition to registration under s 52 (grounds considered included ss 42(b), 44, 58, 59, 60 and 62)
Judgment Date: 24 February 2025
Core Keywords:
Keyword 1: Authentic Judgment Case
Keyword 2: Trade Marks Act 1995 (Cth) non-use removal
Keyword 3: “Use as a trade mark” and badge of origin
Keyword 4: Domain name redirection and trade mark use
Keyword 5: Search engine keywords and invisible use
Keyword 6: Registrar’s discretion under s 101
Background
This decision dealt with two battles running in parallel, between the same procedural parties and in the same commercial arena: banking and financial services.
First, the Applicant sought to remove the Opponent’s long-registered mark “MACBANK” (trade mark no 922504) from the Register on the basis of three years of non-use. The Opponent resisted removal and argued that it had used “MACBANK” in Australia during the relevant period through (a) domain names that redirect to its websites, and (b) purchasing Google search keywords that trigger a sponsored link.
Second, the Opponent attacked the Applicant’s later application “THE MACBANK” (figurative) (trade mark application no 2133339) by alleging a range of opposition grounds, including deceptive similarity, reputation-based confusion, ownership, intention to use, and statutory wrongs under consumer law and passing off.
At the centre of the case was a deceptively simple question with modern consequences: in an online world, what counts as real trade mark use, and what is merely technical or defensive activity that does not operate as a badge of origin?
Core Disputes and Claims
Core legal focus question:
Whether “MACBANK” was used in Australia in good faith as a trade mark during the continuous three-year period ending one month before the non-use application, where the only relied-upon conduct was (i) maintaining “MACBANK” domain names that redirect to the Opponent’s branded websites, and (ii) buying Google keywords containing “MACBANK” to trigger a sponsored link to those websites.
Applicant’s claims and relief sought:
1) Removal of the Opponent’s registration for “MACBANK” for all class 36 services on the ground of non-use under s 92(4)(b).
2) Registration of the Applicant’s “THE MACBANK” (figurative) mark for defined class 36 services.
Opponent’s claims and relief sought:
1) Defeat the removal application by proving use in good faith as a trade mark during the relevant period, or alternatively by persuading the Registrar to exercise discretion not to remove the mark under s 101.
2) Prevent the Applicant’s “THE MACBANK” mark from proceeding to registration by establishing one or more grounds under s 52, including consumer law and confusion-based grounds.
Chapter 2: Origin of the Case
The dispute began with a strategic reality of the financial sector: names matter, reputation matters, and online identifiers can be both shields and weapons.
The Opponent is a major financial services provider with longstanding use and reputation in “MACQUARIE” and “MACQUARIE BANK” branding. Over time, the Opponent came to be referred to by some members of the public and media as “MACBANK”, a shortened label used in conversation and headlines. The Opponent registered “MACBANK” as a trade mark in 2002, covering extensive class 36 services.
The Applicant is a regional authorised deposit-taking institution that historically traded as a credit union and later adopted branding built around “THE MAC”, a reference tied to the Macarthur region. The Applicant wanted a brand evolution that communicated, in plain language, that it provides banking services. In the modern market, “credit union” can be misunderstood by consumers who simply search for “banking”, “loans”, and “accounts”. The Applicant’s business problem was practical: how to modernise brand assets and remain recognisable, while remaining within regulatory constraints around the use of “bank”.
From that commercial pressure, conflict emerged.
The Applicant sought to register “THE MACBANK” (figurative). But the path to registration ran straight through the Opponent’s earlier “MACBANK” registration. The Applicant’s most direct route was to remove the earlier mark on non-use grounds. That move forced the Opponent to prove something it had not previously needed to prove: that it had genuinely used “MACBANK” as a trade mark.
The decisive moments that led to litigation-like opposition proceedings were therefore these:
1) The Applicant filed the non-use removal application under s 92(4)(b), aiming to clear the Register.
2) The Opponent opposed removal and relied on online conduct (redirect domains and Google keywords) as “use”.
3) The Opponent simultaneously opposed registration of the Applicant’s “THE MACBANK” mark, seeking to prevent a competitor’s brand expansion into a similar banking space.
The parties’ relationship was never personal. It was commercial positioning and brand control. But the financial interweaving existed in a different way: market proximity, customer attention, digital search behaviour, and the risk of confusion in a sector where trust is the product.
Chapter 3: Key Evidence and Core Disputes
Applicant’s Main Evidence and Arguments
1) Evidence from the Applicant’s Chief Executive Officer setting out the Applicant’s brand history and its use of “THE MAC” since 2013, including:
– Use on its website and digital channels;
– Physical branch signage;
– External communications and marketing materials;
– Website traffic data across multiple years;
– The business rationale for using “bank” as a descriptor of services provided by an authorised deposit-taking institution.
2) The Applicant’s position on the removal application:
– The Opponent had not used “MACBANK” as a trade mark during the relevant three-year period.
– Merely owning redirecting domain names and purchasing invisible search keywords did not constitute “use as a trade mark” because consumers were not presented with “MACBANK” as a badge of origin for services.
3) The Applicant’s position on registration:
– The Applicant’s mark was not deceptively similar to the Opponent’s “MACQUARIE” marks.
– The Applicant intended to use the mark.
– The endorsement about “BANK” being non-exclusive reflected descriptiveness, not bad faith or illegality.
Opponent’s Main Evidence and Arguments
1) Evidence from senior corporate affairs and media relations personnel about:
– The Opponent’s reputation in “MACQUARIE” and “MACQUARIE BANK”;
– Longstanding media references describing the Opponent as “MACBANK”;
– Registration and use of multiple domain names incorporating “MACBANK”, all redirecting to the Opponent’s primary websites;
– Purchase of Google keywords such as “macbank”, “macbank online”, and “macbank login”, which triggered a sponsored link leading to the Opponent’s websites;
– A search traffic report evidencing consumer searches containing “macbank”.
2) The Opponent’s core “use” submission:
– Domain names incorporating “MACBANK” and keyword advertising constituted use in the course of trade, connected to banking services, and maintained the association between “MACBANK” and the Opponent.
3) Discretion submission under s 101:
– Even if “use” was not proved, the Opponent argued it was reasonable to keep the mark registered because of public association, the risk of confusion, and anti-fraud and anti-phishing strategies tied to domain name control.
Core Dispute Points
1) What is the correct legal meaning of “use” under s 92(4)(b) and s 100: is the conduct “use as a trade mark”, operating as a badge of origin?
2) Can a domain name that simply redirects to a website, where the target website does not display the mark, be trade mark use?
3) Can purchasing search engine keywords that are invisible to consumers be trade mark use?
4) If non-use is established, should discretion under s 101 be exercised to preserve the registration?
5) On the registration opposition: are the Applicant’s “THE MACBANK” and the Opponent’s “MACQUARIE” marks deceptively similar, or likely to confuse because of reputation?
Chapter 4: Statements in Affidavits
The evidentiary contest in this case highlights a recurring truth in trade mark disputes: a party can have a strong brand reputation and still lose a legal argument about a particular sign if the evidence does not match the statutory test.
The Opponent’s affidavit strategy focused on reputation and public usage patterns. It built a dense record of how “MACQUARIE” marks were promoted, the scale of marketing, and third-party references where media and social media users used “MACBANK” as a shorthand label. The Opponent also tried to modernise the concept of “use” by pointing to online behaviour: domains and search advertising as pathways through which consumers reach a business.
The Applicant’s affidavit strategy was narrower but legally sharper. It did not need to deny the Opponent’s fame in “MACQUARIE”. Instead, it kept returning to one statutory choke point: use must be use as a trade mark. It also framed its own “bank” branding as transparent and descriptive, consistent with being an authorised deposit-taking institution.
A key tactical contrast appeared in how each party dealt with consumer exposure:
- The Opponent’s evidence emphasised that consumers typed “macbank” into Google and ended up clicking the Opponent’s link.
- The Applicant’s evidence and submissions emphasised what consumers actually saw at the point of consuming services: the websites displayed “MACQUARIE” branding, not “MACBANK”.
That contrast mattered because the legal boundary in trade mark use is not “does this help consumers find you”, but “does this sign function as the badge of origin for the goods or services”.
Strategic Intent Behind Procedural Directions Regarding Affidavits
The procedural shape of the evidence stages encouraged a full evidentiary record on two different legal questions:
1) The non-use test: evidence had to show what was done during the relevant period, how it appeared to consumers, and whether it was trade mark use.
2) The opposition grounds: evidence had to show reputation, consumer exposure, similarity analysis, and intention to use.
By running the two matters together for hearing, the Registrar’s process forced the parties to confront an uncomfortable reality: “MACBANK” might be meaningful socially, but the legal system asks whether it was used commercially as a badge of origin.
Chapter 5: Court Orders
Prior to the final hearing, the Registrar’s procedural management included:
1) Notices of Intention to Oppose and Defend for each proceeding.
2) Filing of Statements of Grounds and Particulars.
3) Evidence stages: Evidence in Support, Evidence in Answer, and (in the removal matter) Evidence in Reply.
4) A cooling-off period granted by request, then discontinued.
5) A joint hearing requested by both parties and granted, allowing the two matters to be heard together.
These arrangements shaped the case into a single “double-decision” event: one set of oral submissions tested two distinct outcomes, each turning on different statutory mechanisms.
Chapter 6: Hearing Scene: Ultimate Showdown of Evidence and Logic
The hearing was where the case’s modern edge sharpened.
Both parties effectively agreed on the factual building blocks: the Opponent owned “MACBANK” registrations and relevant domains, it bought Google keywords, those activities occurred in the relevant period, and the public sometimes used “MACBANK” as shorthand. The fight was about legal characterisation: whether these facts satisfy the statute.
The cross-examination dynamics, as reflected in the reasons, showed a classic evidentiary pressure point in online “use” cases: a party may show that consumers are routed toward it, but still fail to show that the mark is presented as the brand signifier of services.
Process Reconstruction: Live Restoration
The Opponent’s theory depended on persuading the decision-maker that the online pathway itself constitutes trade mark use. The Applicant’s theory depended on keeping the Court’s eye on the consumer-facing presentation of the service.
The logical break that the Applicant pressed was simple: a consumer search term does not automatically equate to a trade mark being used as the origin label for services. The decision-maker focused on whether the consumer is exposed to the sign as the badge of origin at the point of engagement.
Core Evidence Confrontation
Two evidence clusters were decisive:
1) Redirect domain names: “macbank” domains redirected to websites where “MACBANK” did not appear, and where “MACQUARIE” branding dominated.
2) Google keywords: “macbank” was used as a keyword to trigger sponsored links, but the keyword itself was invisible to the consumer, and the landing pages displayed “MACQUARIE” branding.
Judicial Reasoning Driven by Statute and the Evidence Chain
The decision-maker applied the orthodox approach to “use as a trade mark” and treated context as decisive: what would the relevant public perceive as the badge of origin?
Use of a trade mark is not just any use of a word connected to commerce. The assessment is objective and turns on context, including how the sign is displayed and what it conveys to the ordinary person engaging with the relevant trade.
This framing was determinative because it displaced the Opponent’s attempt to re-define use as “digital routing”. If “MACBANK” never appears as the brand on the service offering, the routing mechanism does not, by itself, satisfy the badge of origin function.
The reasoning also relied on comparisons with prior authority on domains and keyword advertising. The decision contrasted cases where an old domain name was still actively performing the role of transferring customers who were seeking the old brand, against cases where the consumer-facing branding at the destination clearly identified a different badge of origin. The decision-maker treated the destination branding as the key.
In this matter, because the consumer ultimately encountered “MACQUARIE” marks and not “MACBANK”, the statutory characterisation of “use” failed.
Chapter 7: Final Judgment of the Court
Orders and outcome:
1) The Opponent failed to establish its opposition to the removal of trade mark registration no 922504 “MACBANK”. The Registrar directed that the registration be removed from the Register one month from the date of the decision, subject to any appeal being filed before removal takes effect.
2) The Opponent failed to establish any nominated grounds of opposition to the Applicant’s trade mark application no 2133339 “THE MACBANK” (figurative). The application was permitted to proceed to registration one month from the date of the decision, subject to any appeal being filed before registration takes effect.
Costs:
1) Costs were awarded against the Opponent in the removal proceeding in accordance with the Regulations.
2) Reduced costs were awarded against the Opponent in the registration opposition proceeding.
Chapter 8: In-depth Analysis of the Judgment: How Law and Evidence Lay the Foundation for Victory
Special Analysis
This decision has jurisprudential value because it draws a clear boundary around “digital conduct” that might look commercially meaningful, but does not necessarily meet the statutory threshold of “use as a trade mark”.
The practical temptation for brand owners is to treat digital infrastructure as “use”: register domains defensively, buy search keywords, and assume that these actions keep a registration alive. The decision rejects that assumption, not because digital conduct is irrelevant, but because the Trade Marks Act requires use that functions as a badge of origin.
The decision also matters for the banking sector in a unique way. Financial services operate on trust, and consumer confusion can have higher stakes than in many other markets. Yet the decision demonstrates that the statutory architecture does not allow reputation concerns to replace the evidentiary requirement of trade mark use in the relevant period.
Judgment Points
1) Online routing is not automatically trade mark use. A domain name that redirects to a website can be use as a trade mark in some contexts, but only where the domain itself continues to function as a brand signifier to customers, not merely as a technical redirect.
2) Invisible keyword use faces a structural problem: if consumers do not see the sign, it is difficult to show the sign is performing the badge of origin function.
3) Even extensive media shorthand does not convert a sign into a trade mark used by the owner. Public nicknames may exist, but the statute asks what the owner used in trade.
4) Reputation in a family of marks does not automatically extend to a different registered mark unless the evidence shows that mark itself has acquired reputation in its own right for the relevant statutory purpose.
5) Registrar’s discretion under s 101 is not an escape hatch for a proprietor who never used the mark as a trade mark. The discretion is evaluative and requires a compelling basis grounded in the statutory considerations.
Legal Basis
The legal foundation operated in two stages.
Stage 1: Non-use removal framework
– The Applicant relied on s 92(4)(b), which requires a continuous three-year period ending one month before the filing date, during which the owner did not use the mark in Australia in relation to the relevant goods or services.
– The burden to rebut the allegation fell on the Opponent under s 100. The Opponent could rebut by proving good faith use as a trade mark in relation to the services during the relevant period, or by proving circumstances that were an obstacle to use.
Stage 2: Discretionary retention
– Even if grounds for removal are established, s 101 permits a discretion not to remove if it is reasonable, taking into account matters including use on similar goods or closely related services.
On the registration opposition:
– The grounds considered included s 44 (deceptive similarity), s 60 (reputation-based confusion), s 42(b) (contrary to law, including ACL and passing off), s 58 (ownership), s 59 (intention to use), and s 62 (false representations material to acceptance).
Evidence Chain
Victory Point 1: Define the real evidentiary target: consumer-facing badge of origin
Conclusion: There was no use of “MACBANK” as a trade mark in relation to the registered services in the relevant period.
Evidence: The Opponent’s own evidence showed that redirect domains led to websites where “MACBANK” was not displayed and “MACQUARIE” marks dominated.
Statutory provisions: s 92(4)(b) and s 100, informed by principles of “use as a trade mark” and objective assessment of context.
Victory Point 2: Domain redirection failed because the destination did not present the mark
Conclusion: Domain names incorporating “MACBANK” were not trade mark use in the circumstances.
Evidence: The domains redirected to websites that displayed “MACQUARIE” marks, not “MACBANK”.
Legal evaluation: Without historical brand promotion of “MACBANK” by the Opponent and without exposure of “MACBANK” at the consumer-facing service point, the domain does not function as the badge of origin.
Victory Point 3: Keyword purchasing failed because it did not distinguish services in the consumer’s experience
Conclusion: Purchasing “MACBANK” as a keyword did not constitute use as a trade mark.
Evidence: Keywords triggered sponsored links, but the keyword is not seen by consumers; the landing pages showed “MACQUARIE” branding.
Legal evaluation: If the sign is indiscernible to consumers and does not identify the origin of the services, it does not perform the statutory trade mark function.
Victory Point 4: Public shorthand did not cure the absence of commercial use
Conclusion: Media and social media references to “MACBANK” did not establish the Opponent’s use as a trade mark.
Evidence: The record contained many third-party references, but no instance of the Opponent itself using “MACBANK” commercially as the branding for its services.
Legal evaluation: A mark can be talked about socially without being used legally as a trade mark by the owner.
Victory Point 5: Discretion under s 101 was not engaged on these facts
Conclusion: It was not reasonable to preserve the registration through discretion.
Evidence: Proposals for potential brand evolution appeared after the removal application and did not show implementation or concrete future use. The anti-fraud argument did not depend on continued registration of the mark.
Legal evaluation: Discretion requires more than asserted prejudice; it requires a persuasive, evidence-based reason why removal would be unreasonable.
Victory Point 6: On the registration opposition, similarity analysis was anchored in the marks themselves
Conclusion: The Applicant’s mark was not deceptively similar to the Opponent’s “MACQUARIE” marks, even allowing for imperfect recollection.
Evidence: Visual, aural and conceptual differences were significant, particularly the difference between “MACQUARIE” and “MAC”.
Legal evaluation: Confusion cannot arise solely from reputation; some similarity must remain.
Victory Point 7: Reputation in “MACQUARIE” did not automatically produce confusion with “THE MACBANK”
Conclusion: Even with strong “MACQUARIE” reputation, the Applicant’s mark was not likely to deceive or cause confusion because the marks were sufficiently different.
Evidence: The market overlap existed, but the decision-maker found insufficient similarity between marks.
Legal evaluation: The statutory test requires a causal link between reputation and likely deception or confusion.
Victory Point 8: Consumer law and passing off claims failed because the confusion premise failed
Conclusion: If ordinary consumers were not likely to be misled or deceived, the consumer law and passing off theories did not succeed.
Evidence: The reasons rejected the likelihood of misleading conduct based on mark differences.
Legal evaluation: Consumer law misrepresentation and passing off require a stronger or at least concrete misleading effect; without confusion, those claims fall away.
Judicial Original Quotation
The decision’s determinative reasoning can be distilled into two core propositions: (1) use must be as a trade mark assessed objectively in context; and (2) if consumers only see a different badge of origin, the relied-upon sign is not doing the statutory work.
Whether a sign has been used as a trade mark is assessed objectively by reference to context, including the relevant trade, the way the words are displayed, and how they would present themselves to persons who read them and form a view about what they connote.
This statement is determinative because it makes clear that the Court does not ask what the proprietor intended, or how the proprietor internally categorised its online strategy. The Court asks what the consumer-facing reality communicates.
In circumstances where consumers are directed to websites that feature only the proprietor’s other branding, it is those marks that will be construed as the badge of origin for the services offered, not the redirected domain name or invisible keyword.
This statement is determinative because it collapses the Opponent’s argument into its weakest point: if the consumer’s experience is branding by “MACQUARIE”, then “MACBANK” is not doing the trade mark function required to defeat non-use.
Analysis of the Losing Party’s Failure
The Opponent’s failure was not a failure of reputation. It was a failure of statutory fit and evidentiary alignment.
1) The Opponent treated “association” as a substitute for “use”. The evidence showed that some people used “MACBANK” as shorthand, but the statute required the Opponent to show its own use of the sign as a badge of origin in trade during the relevant period.
2) The Opponent’s online conduct was defensive and navigational, not brand-facing. Redirect domains and keyword triggers might channel traffic, but they did not show “MACBANK” operating as the brand for the services.
3) The Opponent did not demonstrate a historical or continuing consumer presentation where “MACBANK” was the identifier of its services. That meant cases where old domains preserved brand transfer dynamics were not persuasive on these facts.
4) The discretion argument was overreliant on asserted prejudice. The evidence did not show concrete future use plans, and the anti-fraud rationale did not logically depend on keeping the trade mark registration.
5) In the registration opposition, the Opponent’s strongest commercial narrative was market overlap, but overlap alone is not enough. The legal test required a real and tangible danger of confusion based on the marks as encountered by consumers.
Implications
1) Trade marks are not preserved by technical possession alone. If you register a mark and never present it to the market as the identifier of your services, non-use vulnerability tends to be relatively high.
2) In digital marketing, “being found” is not always the same as “being branded”. If consumers arrive at your website and only see a different brand, the invisible routing mechanism may not count as use.
3) If you intend to keep a registration alive, build evidence-ready use that a decision-maker can recognise: consumer-facing presentation of the mark in connection with the relevant goods or services, over time, in Australia.
4) If your business is known by nicknames in the media, do not assume those nicknames are legally yours. Without your own commercial use as a badge of origin, the legal protection may be thinner than the public perception suggests.
5) If you are challenging a competitor’s mark, focus on the statutory hinge points and evidence alignment. Courts and delegates tend to be persuaded by clean chains of reasoning rather than broad claims about market power or reputation.
Q&A Session
Q1: If consumers type “macbank” into Google and click the Opponent’s sponsored link, why is that not trade mark use?
A: Because the legal test is not whether the activity attracts clicks. The test is whether “MACBANK” is used as a badge of origin for services. Where the keyword is invisible and the consumer-facing branding at the destination is “MACQUARIE”, the sign “MACBANK” is not functioning as the trade mark for the services.
Q2: Does owning a domain name that includes a trade mark always count as use?
A: Not always. A domain name can sometimes be trade mark use, particularly if it is promoted to consumers as the brand identifier and continues to function that way. But where it merely redirects to a site branded differently and the redirected mark is not presented to consumers, the use may not satisfy the statutory requirement.
Q3: Can a famous brand rely on media shorthand to prove reputation in a separate registered mark?
A: It can be difficult. Reputation in one mark does not automatically extend to another unless the evidence shows the public recognises that specific mark as a trade mark in its own right. Third-party references may help, but without commercial use by the owner, the argument tends to be harder to sustain.
Appendix: Reference for Comparable Case Judgments and Practical Guidelines
1. Practical Positioning of This Case
Case Subtype: Trade Mark Non-Use Removal and Registration Opposition in Financial Services Branding (Online Use, Domain Names, Search Engine Keywords)
Judgment Nature Definition: Final administrative decision of a Delegate of the Registrar of Trade Marks with reasons (determinative at first instance, subject to appeal)
2. Self-examination of Core Statutory Elements
This case most closely aligns with Category ④ Commercial Law and Corporate Law.
Core Test: Contract Formation (Offer, Acceptance, Consideration, Intention)
Although the dispute was not a contract formation case, commercial disputes often unfold with parallel contractual relationships such as marketing agency arrangements, licensing, or co-existence discussions. If a similar branding dispute arises alongside contractual promises, the following self-check tends to be relevant:
1) Offer
– Identify whether one party made a clear proposal capable of immediate acceptance.
– Check whether the offer was sufficiently certain in its key terms, including scope, territory, duration, and permitted branding conduct.
2) Acceptance
– Determine whether acceptance occurred by words or conduct.
– Consider whether any “subject to contract” language tends to postpone binding agreement.
3) Consideration
– Confirm whether something of value was exchanged, such as payment, restraint, mutual releases, or undertakings.
4) Intention to create legal relations
– In commercial dealings, intention is often presumed, but can be displaced where negotiations are explicitly non-binding.
Practical warning: In brand disputes, informal email “in-principle” understandings tend to create relatively high risk if operational teams begin acting as if a deal exists before formal documentation is executed.
Core Test: Section 18 of the Australian Consumer Law (Misleading or Deceptive Conduct)
The Opponent relied on ACL theories as part of the “contrary to law” ground.
Self-check framework:
1) Conduct in trade or commerce
– Identify the relevant conduct: use of a mark, advertising, domain usage, sponsored search links, website branding, branch signage, or customer communications.
2) Likely to mislead or deceive
– Focus on the ordinary or reasonable consumer within the target market.
– Examine the overall impression, not fine-print distinctions.
3) Causal connection and context
– Consider how and where consumers encounter the conduct: search engines, landing pages, app login pages, banking portals, branch signage, email domains.
4) Evidence of confusion
– Direct evidence is not always required, but concrete examples strengthen the argument.
Practical warning: In financial services, confusion arguments can feel intuitively strong, but the legal threshold still depends on what consumers actually encounter and whether the overall impression tends to mislead.
Core Test: Unconscionable Conduct
This was not the primary basis of the decision, but in commercial branding disputes, parties sometimes allege unconscionability where one party exploits imbalance.
Self-check framework:
1) Special disadvantage
– Language barriers, lack of sophistication, urgent need, or structural vulnerability.
2) Knowledge and exploitation
– Whether the stronger party knew or ought to have known of the disadvantage and took advantage.
3) Against good conscience
– The ultimate evaluation of whether the conduct is so sharp that it crosses the line.
Practical warning: Unconscionable conduct allegations tend to be relatively high risk if pleaded without clear, particularised facts showing disadvantage and exploitation.
3. Equitable Remedies and Alternative Claims
Brand disputes do not always fit neatly into a single statutory box. When a statutory pathway is weak or unavailable, alternative doctrines may still offer leverage.
Promissory or Proprietary Estoppel
In branding or co-existence contexts, estoppel may arise where:
1) Clear and unequivocal representation
– For example, “We will not object to your use of this branding” or “We will permit your regional use”.
2) Reliance and detriment
– The other party changes branding, incurs marketing spend, redesigns signage, or migrates customer communications.
3) Unconscionability
– It may be against conscience to allow a party to resile where the other has materially relied.
Possible remedy: restraint against inconsistent conduct, or a structured outcome preventing withdrawal of the promise in certain circumstances.
Unjust Enrichment and Constructive Trust
Less common in pure trade mark disputes, but may arise where:
1) Benefit at another’s expense
– For example, transfer of a domain portfolio, payment for development of a brand asset, or funding of shared marketing property.
2) Absence of juristic reason
– No valid contract or lawful basis for retention.
Possible remedy: restitutionary relief or equitable accounting.
Procedural Fairness
Where the dispute shifts into judicial review or administrative law contexts, procedural fairness can become a decisive pathway. In trade mark office contexts, it may arise where a party alleges denial of the opportunity to be heard or apprehended bias, though such allegations require careful grounding in the procedural record.
4. Access Thresholds and Exceptional Circumstances
Regular Thresholds
1) Non-use removal timing
– A non-use application under s 92(4)(b) requires that the mark has remained registered for a continuous period of three years ending one month before the application is filed.
2) Burden of rebuttal
– Once non-use is alleged, the registered owner bears the onus to rebut by proving use in good faith during the relevant period, or a statutory obstacle to use.
3) Discretion
– Even if grounds are made out, the Registrar has a discretion under s 101 not to remove if satisfied it is reasonable.
Exceptional Channels
1) Discretionary retention under s 101
– The Registrar may take into account use on similar goods or closely related services, residual reputation, and other evaluative factors. However, the discretion tends to require a persuasive evidentiary basis.
2) Obstacle to use
– If external circumstances prevented use during the relevant period, that may be relied upon. The obstacle must be real and causally connected to non-use.
Suggestion: Do not abandon a potential claim simply because a threshold seems difficult. Carefully identify whether evidence can be built to show consumer-facing use, or whether an exceptional pathway like discretion is realistically supportable. In digital contexts, the quality of consumer-facing evidence tends to be decisive.
5. Guidelines for Judicial and Legal Citation
Citation Angle
It is recommended to cite this case in submissions or debates involving:
– The meaning of “use as a trade mark” in the context of online conduct;
– Whether redirecting domains constitute trade mark use;
– Whether search engine keyword purchasing constitutes trade mark use;
– The scope and limits of discretion under s 101 in non-use removal proceedings.
Citation Method
As Positive Support:
– Where your matter involves reliance on technical online activity as “use”, cite this authority to emphasise that consumer-facing badge of origin analysis is decisive and that mere routing may be insufficient.
As a Distinguishing Reference:
– If the opposing party cites this decision, consider distinguishing by showing that, unlike this case, your client displayed the mark prominently on landing pages, login pages, product pages, app interfaces, or customer communications during the relevant period, such that consumers encountered the sign as the badge of origin.
Anonymisation Rule:
– Use procedural titles such as Applicant and Opponent when discussing the parties in your own materials.
Conclusion
This decision demonstrates a modern, practical lesson: in trade marks law, digital infrastructure is not automatically “use”. The statutory question remains grounded in consumer perception: did the sign function as the badge of origin for the services in Australia during the relevant period?
Everyone needs to understand the law and see the world through the lens of law. The in-depth analysis of this authentic judgment is intended to help everyone gradually establish a new legal mindset: True self-protection stems from the early understanding and mastery of legal rules.
Disclaimer
This article is based on the study and analysis of the public decision 2025 ATMO 38 (IP Australia, Delegate of the Registrar of Trade Marks), aimed at promoting legal research and public understanding. The quotation of relevant reasoning is limited to the scope of fair dealing for the purposes of legal research, comment, and information sharing.
The analysis, structural arrangement, and expression of views contained in this article are original content of the author, and the copyright belongs to the author and this platform. This article does not constitute legal advice, nor should it be regarded as legal advice for any specific situation.
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