Trade Mark Non-Use Removal Dispute: When “Minimal Use” and Reliable Dating Evidence Justify Keeping a Registration for Jewellery but Not for Everything Else?

Introduction (Mandatory Fixed Text) Based on the authentic Australian judicial case 2025 ATMO 219 (Trade mark number 1559183), 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. :contentReference[oaicite:0]{index=0}

Chapter 1: Case Overview and Core Disputes

Basic Information

Court of Hearing: Office of the Registrar of Trade Marks (Oppositions and Hearings), Australia

Presiding Judge: Delegate of the Registrar of Trade Marks (Hearing Officer)

Cause of Action: Application for removal for non-use under section 92(4)(b) of the Trade Marks Act 1995 (Cth), opposed by the registered owner

Judgment Date: 29 October 2025 (Reasons published as 2025 ATMO 219)

Core Keywords:

Keyword 1: Authentic Judgment Case
Keyword 2: Trade mark non-use removal
Keyword 3: Good faith use and token use
Keyword 4: Australia-targeted internet use
Keyword 5: Evidence “timestamp” and provenance
Keyword 6: Partial removal and Register integrity

Background

This case is a textbook example of how trade mark rights in Australia are not “set-and-forget”. A registered mark can be cut back if it sits on the Register covering broad goods and services that the owner cannot prove were genuinely used in Australia during the legally defined window. Here, the Applicant invoked the non-use provisions to clear a wide registration. The Opponent resisted, arguing it had used the mark and, even if use was limited, the mark should remain to avoid confusion and because it had been used on related goods and services.

The dispute was not really about whether the Opponent was a well-known jewellery group in parts of the world. It was about something more specific and more Australian: within the Relevant Period, did the Opponent use the registered mark in Australia, in good faith, as a badge of origin, for each of the goods and services it had claimed? If not, should discretion still save the registration for those unused categories, despite the public interest in keeping the Register “pure”?

Importantly, the case demonstrates a practical truth for brand owners: the wider your specification, the more you must be able to prove use across it. A broad registration can become a liability when challenged, because the evidence must match the specification and the dates must line up.

Core Disputes and Claims

Core dispute: Whether the registered owner had used the trade mark in Australia, in good faith, during the three-year Relevant Period ending one month before the non-use application date, for the full spread of goods and services claimed; and if not, whether discretion under section 101 should nevertheless preserve the unused portions.

Applicant’s claim/relief sought: Complete removal of the registration under section 92(4)(b) for non-use.

Opponent’s claim/relief sought: Dismissal of the removal application, or at least retention of the registration (in whole or substantial part), by proving use or by persuading the delegate to exercise discretion not to remove.

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Chapter 2: Origin of the Case

The relationship between the parties is best understood as a strategic collision in branding and market positioning, played out through the mechanics of Australia’s trade mark Register.

The Opponent held a registration filed in May 2013, covering a wide spread of goods and services, including not only jewellery and retail services, but also items such as mobile phone accessories, printed matter, financial services, material treatment, and various technical and authentication services. That breadth is often sought for commercial reasons: it can deter competitors, create licensing options, and reserve space for expansion.

The Applicant, a jewellery business with its own branding and overseas online sales activity, saw the registration as a barrier. Whether the Applicant’s deeper commercial goal was freedom to operate, stronger positioning for its own marks, or reducing perceived “occupied territory” on the Register, the legal pathway it chose was direct: a non-use removal application.

That application triggers an evidence contest with a very particular structure. The Applicant does not have to prove non-use in the world in general. It points to the Register and the law. Then the onus shifts: the registered owner must prove use in Australia, during the exact Relevant Period, for the goods and services under attack, or prove obstacles to use. This is where many trade mark owners stumble—not because they did nothing, but because what they did cannot be proved with reliable dates, cannot be tied to Australia, or does not match the specification.

In everyday business terms, the conflict emerges like this:

1. A mark exists on the Register with a wide “shopping list” of categories.
2. A competitor wants that space freed up or narrowed.
3. The competitor picks the three-year window the legislation defines and challenges use.
4. The registered owner must produce dated, Australian-relevant evidence showing genuine commercial use as a badge of origin.
5. If the evidence only supports part of the list, the registration can be surgically cut back.

This case then becomes a story about decisive moments in evidence:

• invoices that carry dates and show the mark in a sales context,
• social media posts that are clearly timestamped and connected to an Australian store,
• photos of packaging and promotional items with no reliable dates,
• and websites that may display the mark, but without persuasive proof they targeted Australians in the Relevant Period.

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Chapter 3: Key Evidence and Core Disputes

Applicant’s Main Evidence and Arguments

1. Corporate history and commercial activity narrative:
   • The Applicant described its business operations, branding, and channels of sale, including online platforms and overseas-facing marketing.
2. Australian sales via third-party marketplace:
   • The Applicant provided materials showing sales into Australia through an online marketplace, with product availability dates and sales figures for Australian consumers over defined dates.
3. Coexistence and broader trade mark environment:
   • The Applicant described coexistence of marks and referenced other Australian trade mark proceedings affecting its applications.

Strategic point: The Applicant’s evidence was not required to prove the Opponent’s non-use directly. The main legal engine is that the Opponent, as the registered owner, bears the burden of rebutting non-use for each attacked category.

Opponent’s Main Evidence and Arguments

The Opponent’s evidence was anchored in a declaration by its representative, with annexures that included:

1. Physical store presence and retail use in Australia:
   • Photographs of Australian retail stores.
   • Social media screenshots for an Australian store account with visible dates within the Relevant Period, showing the mark in a retail context.
2. Dated invoices showing trade in Australia:
   • Copies of invoices dated within the Relevant Period, displaying the mark, and covering specific jewellery products.
3. Promotional and collateral materials:
   • Photos of business cards, packaging, a purse, a cup, a mini fan, and packaging ribbon. Many of these were undated.
   • Photos of calendars that displayed dates within the Relevant Period, but without clear evidence of distribution to Australian customers in the course of trade.
4. Websites and internet presence:
   • Screenshots and archive captures of group websites.
   • A traffic table said to indicate visits from Australia.
   • Screenshots for specialised services websites claimed to relate to appraisals or authentication.

Strategic point: The Opponent attempted to leverage brand ecosystem evidence—websites, group services, and promotional items—to keep broad categories. The delegate treated this as an evidentiary quality problem: the law demanded reliable, dated proof of use in Australia for the specific goods and services under challenge.

Core Dispute Points

1. “Use in Australia” during the Relevant Period:
   • The Relevant Period was the three years ending on 4 August 2024.
   • The key question was not general reputation, but proven use within that window.
2. “Use as a trade mark” and “use in good faith”:
   • The use must be use as a badge of origin, not merely decorative display.
   • Token or purely symbolic use carries little weight, and where reliance is on small amounts of use, the proof must be especially convincing.
3. Evidence provenance and “timestamp” reliability:
   • Undated examples were treated as low weight.
   • Bald assertions without dated documentary support were treated with caution.
4. Matching evidence to specification:
   • Evidence supported jewellery and jewellery retail services.
   • Evidence did not convincingly support the wide remainder: class 9 items, class 16 printed matter, class 36 financial services, class 40 material treatment, and class 42 services.
5. Discretion under section 101:
   • Even if non-use was established, could discretion preserve the unused portions?
   • The delegate required positive satisfaction that it was reasonable not to remove, against the public interest in Register integrity.

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Chapter 4: Statements in Affidavits

Affidavits, in trade mark non-use disputes, are not merely storytelling documents. They are a bridge between a commercial narrative and the legal tests. This case shows how affidavit drafting succeeds or fails depending on whether it delivers the Court’s preferred currency: objectively dated, Australia-relevant, specification-matched evidence.

1. How each party used affidavit narrative

• The Opponent’s affidavit approached the case as an overall brand presence argument: group scale, store roll-out, multiple channels, multiple websites, multiple collateral items. That approach can be persuasive in broad commercial disputes, but in non-use proceedings the critical danger is dilution. If the affidavit spreads attention across many categories without locking each category to dates and to Australia, the delegate can accept the broad story yet still remove unused goods and services.

• The Applicant’s affidavit approach was tactical: it reinforced that the market context involves active online sales and competing branding interests, and it proceeded in a way consistent with the statute’s burden-shift structure. The Applicant’s job was not to prove the Opponent did nothing, but to force the Opponent to prove something, properly.

1. Comparing expressions of the same fact

A key boundary between untruths and facts in affidavit practice lies not in whether a statement is sincere, but whether it is provable.

• Statement style that tends to fail:
  • “We have continuously used the mark in Australia since opening our store.”
  • This may be true, but without dated records, it is an assertion.
• Statement style that tends to succeed:
  • “Attached are invoices dated between November 2021 and 4 August 2024, each displaying the mark, for sales of identified jewellery items in Australia.”
  • This is testable, date-locked, and tied to trade.

In this case, invoices and dated social media posts carried the Opponent over the line for jewellery and jewellery retailing. Undated photographs and website screenshots with weak Australia targeting did not.

1. Strategic intent behind procedural directions regarding affidavits

The procedural structure, allowing evidence in support, evidence in answer, and optional evidence in reply, is designed to force each side to commit to its evidentiary theory:

• The Opponent must decide whether it will prove use widely or accept a narrower outcome.
• The Applicant can then test whether the Opponent’s evidence truly matches the specification and the Relevant Period.
• The absence of evidence in reply can matter where the Applicant exposes gaps; it means the Opponent’s case stands on the initial record.

In practice, the delegate’s approach reflects a common expectation: if a party wants to keep a broad registration, it must produce evidence of a quality that is difficult to dismiss.

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Chapter 5: Court Orders

Prior to the final determination, the matter followed the standard administrative litigation architecture for trade mark removal and opposition proceedings:

1. Filing and pleadings steps:
   • Removal application filed under section 92(4)(b).
   • Notice of intention to oppose and statement of grounds and particulars filed by the Opponent.
   • Notice of intention to defend filed by the Applicant.
2. Evidence sequence:
   • Evidence in support filed by the Opponent.
   • Evidence in answer filed by the Applicant.
   • No evidence in reply filed.
3. Hearing election:
   • The parties were given the opportunity for written or oral submissions.
   • The Applicant requested a decision without a hearing.

Although these are not “orders” in a court sense, they are procedural directions and arrangements that control the evidence pipeline and therefore shape the outcome. In non-use matters, the key practical takeaway is that evidence deadlines are outcome-defining. A late attempt to fix missing timestamps or Australia-targeting can be impossible once the evidentiary window closes.

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Chapter 6: Hearing Scene: Ultimate Showdown of Evidence and Logic

Perspective: Strict, objective Third-Party Perspective.

Process Reconstruction: Live Restoration

There was no oral hearing. That did not reduce the intensity of the contest—it relocated it into documents. In trade mark non-use matters, the “cross-examination” happens through forensic reading: the delegate tests each exhibit the way a barrister would test a witness—by asking, repeatedly:

• What is this document?
• Who created it?
• When was it created?
• Does it relate to Australia?
• Does it show use as a badge of origin?
• Which item in the specification does it match?

Logical inconsistencies or breaks in testimony appear as evidentiary gaps:

• A photograph of packaging with the mark: persuasive visually, but if it is undated, it cannot prove use in the Relevant Period.
• A website screenshot: it shows the mark, but unless it is directed or targeted to Australian consumers, it may not be “use in Australia”.
• A calendar with Relevant Period dates printed on it: it might look like a dated object, but without evidence of distribution to customers in Australia in the course of trade, its legal weight can collapse.

Core Evidence Confrontation

The decisive confrontation was between two types of proof:

1. High-provenance proof:
   • Dated invoices showing sales in Australia with the mark displayed.
   • Dated social media posts tied to an Australian store presence.
2. Low-provenance proof:
   • Undated photographs of promotional items and packaging.
   • Website materials without persuasive Australia targeting.
   • Archived pages in a language not clearly directed to Australian consumers, without evidence of Australian marketing or transactions.

The delegate accepted the first category as sufficient to show use for jewellery and jewellery retailing. The second category was treated as insufficient to support the remaining broad goods and services.

Judicial Reasoning: How Facts Drove the Result

The delegate’s reasoning was driven by two linked principles: proof quality and jurisdictional targeting.

“Undated examples of use carry little, if any, weight.”

This statement was determinative because it framed the evidentiary standard. Once the delegate adopted this lens, a large portion of the Opponent’s promotional material became legally fragile. The outcome then depended on what remained: invoices and clearly dated Australian-facing evidence.

The second key reasoning mechanism dealt with internet use:

“Use … on the internet … without more, is not a use … in each jurisdiction where the mark is downloaded.”

This was determinative because the Opponent relied on websites to support broad service categories. The delegate required evidence the internet presence was directed or targeted at Australian consumers. Without that, the websites did not prove use in Australia for the relevant services.

The logic chain, expressed in administrative adjudication terms, was strict:

• Section 92(4)(b) defines the test.
• Section 100 places the onus on the registered owner.
• The evidence is assessed on the balance of probabilities.
• Use must be in good faith and as a trade mark.
• If non-use is established for certain categories, the delegate then considers obstacles and discretion.
• Discretion demands positive satisfaction that non-removal is reasonable, weighed against the public interest in Register integrity.

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Chapter 7: Final Judgment of the Court

The decision was a partial victory for both sides, but with a practical tilt toward Register integrity.

1. The registration was retained for:
   • Class 14 jewellery goods (including various jewellery items and precious metal works), on the basis that use in Australia in the Relevant Period was established for jewellery and that some specific jewellery items were not worth deleting if “jewellery” remained.
   • Class 35 retail and wholesale services relating to jewellery and closely connected goods, to the extent supported by the evidence.
2. The registration was partially removed for:
   • The remaining goods and services not supported by convincing evidence of use in Australia during the Relevant Period, including broad claims in classes 9, 16, 36, 40 and 42, and any remaining unsupported items in classes 14 and 35.
3. Discretion was not exercised to save the unused portions:
   • The delegate was not positively satisfied it was reasonable to keep unused categories, especially given the public interest in maintaining the Register as an accurate record.
4. Costs:
   • No costs were awarded, as neither party was entirely successful.

Procedural direction regarding appeal:
– The registration would not be restricted until any appeal was discontinued or dismissed, or the Court otherwise directed.

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Chapter 8: In-depth Analysis of the Judgment: How Law and Evidence Lay the Foundation for Victory

[CRITICAL ORDER INSTRUCTION]: The output order of content within this chapter is: (Special Analysis → Judgment Points → Legal Basis → Evidence Chain → Judicial Original Quotation → Analysis of the Losing Party’s Failure).

Special Analysis

1. This decision is a warning against “warehouse registrations”

A broad specification can look like a commercial moat. But in a non-use attack, it becomes a checklist. If the evidence only supports a narrow portion, the moat becomes a map of vulnerability. The Registrar’s role is not to reward ambition; it is to keep the Register aligned with real trade.

1. “Symbolic use” is not just a moral criticism; it is an evidentiary diagnosis

This decision does not merely say “token use is bad”. It says that if you rely on slight use, your proof must be “overwhelmingly convincing”. In other words, minimal use can save you—but only if you can prove it with dates, provenance, and commercial context.

1. Internet evidence is not automatically Australian evidence

The decision reinforces a recurring rule: a global website is not an Australian marketplace unless there is evidence of Australia-targeted marketing, transactions, or specific Australian-directed use. Traffic tables and archived pages may be background, but they are rarely enough without a clear Australia connection.

1. Discretion under section 101 is not a safety net you can assume

The discretion is broad, but it is not a rescue rope thrown automatically to a trade mark owner. The owner must persuade the delegate it is reasonable not to remove. The public interest in Register integrity is a powerful counterweight, and in practice, it often wins unless the owner brings strong, specific discretionary factors with evidence.

Judgment Points

1. The onus is the registered owner’s burden, not the challenger’s burden

Once the non-use application is filed, the registered owner bears the practical burden of proof. If the owner’s evidence is incomplete, the challenger does not need to fill the gap. That structural reality is why non-use proceedings are so effective as commercial tools.

1. “Use” must be “use as a trade mark”

The decision adopts the orthodox concept: use must function as a badge of origin. Displaying a sign in ways that do not indicate trade origin may not qualify. This matters when owners rely on collateral items—cups, fans, packaging, calendars—where the mark may be present but not clearly used to distinguish goods and services in trade within Australia.

1. Dated invoices are often the strongest evidence in non-use contests

Invoices are third-party facing, commercial, and time-stamped. They show real trade. In this case, invoices within the Relevant Period carried significant weight for jewellery goods and related retail services.

1. Undated photographs are the classic weak point

The decision treats undated materials as low weight. This is not harshness; it is logical. A photograph can prove appearance, but not timing. Non-use proceedings are about timing.

1. Website screenshots require a jurisdictional bridge

The decision applies the principle that a website uploaded outside Australia is not automatically use in Australia. The bridge is proof of targeting: Australian marketing, Australian purchasing pathways, Australian pricing, shipping to Australia, or other objective indicators.

1. Discretion requires evidence, not mere assertion

The Opponent raised confusion and similarity as ideas, but did not provide persuasive evidence or submissions to link the unused categories to used categories, or to establish why retention was reasonable despite non-use. The delegate preferred Register purity.

Legal Basis

1. Statutory framework: Trade Marks Act 1995 (Cth)

• Section 92(4)(b): Allows a non-use removal application where a trade mark has remained registered for a continuous period of three years ending one month before filing, and during that period the owner did not use the mark in Australia, or did not use it in good faith, in relation to the goods and services in question.

• Section 93(2): Controls when a non-use application may be brought, with transitional timing issues depending on filing dates.

• Section 100: Places the onus on the registered owner to rebut allegations of non-use, including by showing use or circumstances that were an obstacle to use.

• Section 101: Empowers partial removal and creates discretion not to remove even if grounds are established, requiring positive satisfaction that it is reasonable to retain.

1. Key authorities applied

• Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156: referenced for the balance of probabilities approach in proving use.

• Blount Inc v Registrar of Trade Marks [1998] FCA 440: cited for the meaning of “satisfied” as persuasion on the balance of probabilities.

• Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261: cited for “use in good faith” being real commercial use, not token use, and for the idea that a single bona fide use can suffice if proved convincingly.

• Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721: referenced for the badge of origin principle in “use as a trade mark”.

• Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471: cited on internet use and targeting.

• International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd [2011] FCA 339: cited as an example where website structure and marketing supported use in Australia.

• PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128: relied upon for the breadth and purpose of discretion and the balance between consumer interest, trader interest, and Register integrity.

• Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13: invoked for the public interest in the integrity and “purity” of the Register.

Evidence Chain

Victory Point 1: Precisely defined Relevant Period, then evidence selection matched it

Conclusion = Evidence + Statutory Provisions
– Statutory provision: section 92(4)(b) fixes the Relevant Period.
– Evidence: invoices dated within the Relevant Period and social media posts dated within the Relevant Period.
– Result: sufficient proof of use for jewellery and jewellery retailing.

Practical lesson: Start with the Relevant Period and audit your evidence against it. If an exhibit cannot be reliably placed inside the window, treat it as decorative, not decisive.

Victory Point 2: Invoices tied the mark to trade, not mere promotion

Conclusion = Evidence + Statutory Provisions
– Statutory provision: the Act requires use “in relation to” goods and services in Australia.
– Evidence: invoices for sales of jewellery items, displaying the trade mark, dated within the Relevant Period.
– Result: this demonstrates commercial dealing and badge-of-origin use.

Practical lesson: In non-use disputes, invoices are often superior to marketing materials because they demonstrate actual trade.

Victory Point 3: Store-linked social media posts supplied date certainty and local context

Conclusion = Evidence + Statutory Provisions
– Statutory provision: use must be in Australia during the Relevant Period.
– Evidence: social media screenshots with visible dates linked to an Australian store presence.
– Result: supports the inference of Australian trade use and continuity.

Practical lesson: If social media is relied upon, capture posts with platform timestamps and contextual cues tying the account to an Australian outlet.

Victory Point 4: Undated promotional materials failed the “timestamp” standard

Conclusion = Evidence + Statutory Provisions
– Statutory provision: the owner bears the onus to prove use in the Relevant Period.
– Evidence weakness: undated photographs of packaging, merchandise, and accessories.
– Result: little weight, insufficient to prove use during the Relevant Period.

Practical lesson: Always preserve metadata, purchase orders, printer invoices, distribution records, or third-party corroboration that fixes promotional items to time and Australian distribution.

Victory Point 5: “Calendars with dates” were still not enough without trade-context proof

Conclusion = Evidence + Statutory Provisions
– Statutory provision: use must be in the course of trade, not mere existence of an item.
– Evidence issue: calendars displayed Relevant Period dates, but there was no evidence of Australian distribution or commercial dealing.
– Result: not satisfied that this was use in the course of trade.

Practical lesson: Even if an object contains a date, you must still prove the object was supplied or used in trade in Australia, linked to the mark’s function as a badge of origin.

Victory Point 6: Websites failed because Australia-targeting was not proved

Conclusion = Evidence + Statutory Provisions
– Statutory provision: use must be in Australia.
– Authority: Ward Group principle requires targeting evidence.
– Evidence issue: screenshots and archives, but no persuasive proof of Australian-directed marketing or transactions.
– Result: no use established for claimed financial or technical services.

Practical lesson: For website use, prove targeting: Australian currency pricing, shipping to Australia, Australian customer journeys, geo-targeted ads, Australian terms pages, or evidence of Australian sales inquiries and fulfilment.

Victory Point 7: Discretion failed because the Opponent did not build an evidence-backed discretionary case

Conclusion = Evidence + Statutory Provisions
– Statutory provision: section 101 requires positive satisfaction it is reasonable not to remove.
– Authority: PDP Capital emphasises Register integrity and requires active persuasion by the owner.
– Evidence issue: assertions about confusion and similarity were not backed by specific evidence and analysis.
– Result: discretion not exercised; unused categories removed.

Practical lesson: Discretion is litigated, not assumed. If you want discretionary retention, prepare evidence and submissions that squarely address public interest, your residual reputation, and the relationship between used and unused categories.

Victory Point 8: Partial removal is a precision tool that follows evidence, not brand narrative

Conclusion = Evidence + Statutory Provisions
– Statutory provision: section 101 allows partial removal for goods and services not proved.
– Evidence: proved use for jewellery and related retailing, not for the rest.
– Result: surgical retention for what was proved; removal for what was not.

Practical lesson: Draft specifications you can support. The Register is not a general statement of aspiration; it is a legal register of trade reality.

Judicial Original Quotation

Context: The delegate approached the evidence through a strict lens of reliability and dating, which determined what could be counted as “use” in the Relevant Period.

“Undated examples of use carry little, if any, weight.”

Why it was determinative: This principle converted a large volume of attractive but undated promotional exhibits into legally weak material. Once that occurred, the decision naturally pivoted to the invoice evidence and the clearly dated social media evidence.

Context: The Opponent relied on websites to justify broad categories, but the legal test required proof of Australian-directed use, not mere global availability.

“Use … on the internet … without more, is not a use … in each jurisdiction where the mark is downloaded.”

Why it was determinative: This statement set the threshold for internet evidence. Without proof of Australian targeting, the websites could not sustain claims to services such as financial services or technical authentication services in Australia during the Relevant Period.

Context: The delegate then assessed discretion, placing the public interest in Register integrity at the centre of the balancing exercise.

“There is a public interest in maintaining the integrity … of the Register.”

Why it was determinative: Discretion under section 101 is exercised against the legislative purpose of removing unused marks. The delegate required compelling reasons to override that purpose. Without a strong evidence-backed discretionary case, Register integrity carried the day.

Analysis of the Losing Party’s Failure

The “losing party” in each contested category was effectively the party bearing the evidentiary burden for that category. In practical terms, the Opponent lost the fight for the broad remainder of the specification.

Failure 1: Over-reliance on undated materials

The Opponent’s promotional material had visual impact but insufficient evidentiary weight. Non-use proceedings are time-window litigation. If you cannot anchor evidence to the Relevant Period, the delegate is not required to guess.

Failure 2: Insufficient Australia-targeting proof for websites

The Opponent’s web evidence lacked the jurisdictional bridge. The delegate looked for objective signs that the websites were directed to Australian consumers during the Relevant Period. Without that, global web presence did not become Australian trade mark use.

Failure 3: Specification mismatch

The registration covered goods and services far beyond jewellery retailing. The evidence, at its strongest, was jewellery store trade and jewellery invoices. That evidence does not naturally prove use for mobile phone accessories, printed matter, financial services, material treatment, or technical research and authentication services in Australia.

Failure 4: Discretion case not properly built

The Opponent raised themes—similarity, confusion—but did not prove them with the kind of structured evidence and reasoning that section 101 discretion demands. Where public interest in Register purity is strong, discretion needs more than a concern; it needs a case.

Failure 5: Lack of rebuttal after evidence in answer

No evidence in reply was filed. Where gaps are exposed, reply evidence can sometimes supply missing dates, corroboration, or Australian targeting proof. Without it, the delegate is left with the initial weaknesses.

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Implications

1. If you register wide, you must evidence wide
   A broad registration is not a trophy; it is a promise to the Register that your mark will be used in those categories. If a non-use challenge arrives, only real proof within the Relevant Period will protect you.

2. Treat timestamps as assets, not administrative clutter
   In trade mark practice, a dated invoice, dated distribution record, or dated platform post can be worth more than an entire folder of beautiful but undated marketing images. Evidence management is brand protection.

3. Internet use must be translated into Australia
   A website can feel global, but the law asks a local question: was it used in Australia, directed to Australian consumers, in the Relevant Period? Plan your digital evidence so you can answer that without guesswork.

4. Discretion is a separate battle
   Even if you lose on strict use, you can still fight on discretion. But you must bring evidence and structured submissions. Do not assume the decision-maker will protect unused categories simply because you fear confusion.

5. The Register is for consumers, not just traders
   This decision reinforces that the Register’s integrity serves the public by indicating real trade origins. When marks remain registered for unused categories, they can distort the market. Australian law is designed to correct that.

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Q&A Session

1. Why did invoices matter more than photos of packaging and promotional items?
   Because invoices are dated, commercial documents that show real dealings in the course of trade. Photos can prove appearance but often cannot prove timing. In a three-year Relevant Period test, timing is everything.

2. Can a single sale save a trade mark from removal?
   Yes, a single bona fide use can be sufficient in principle, but the evidence must be highly convincing. The fewer acts relied on, the stronger the proof must be. The practical approach is to preserve multiple dated records rather than gamble on one.

3. What kind of website evidence usually helps prove use in Australia?
   Evidence that the website was directed to Australians, such as Australian currency pricing, shipping to Australia, Australian customer orders, Australian-targeted ads, Australia-specific landing pages, or a clear Australian purchasing pathway with dated records.

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Appendix: Reference for Comparable Case Judgments and Practical Guidelines

1. Practical Positioning of This Case

Case Subtype: Trade Mark Non-Use Removal Proceeding (Part 9 Register Integrity Dispute)

Judgment Nature Definition: Final administrative decision by a Delegate of the Registrar of Trade Marks (partially allowing the non-use removal application and ordering partial removal)

2. Self-examination of Core Statutory Elements

[Execution Instruction]: Based on the case type, display the corresponding core legal test standards one by one. These are for reference only; outcomes depend on the specific facts and evidence, and the risk profile tends to vary with evidentiary quality and category breadth.

⑨ Civil Litigation and Dispute Resolution

Core Test: Has the Limitation Period expired? Does the Court have Jurisdiction over the matter? Has the duty of Discovery/Disclosure of evidence been satisfied?

Step-by-step application to trade mark non-use disputes, with rigorous detail:

1) Threshold timing and statutory gateway

• Identify the filing date of the challenged registration.
• Confirm when a non-use application may be filed, including transitional issues for registrations filed before statutory amendments.
• Identify the non-use ground being relied upon, typically section 92(4)(b), and calculate the Relevant Period: three continuous years ending one month before the non-use application filing date.

Risk note: Miscalculating the Relevant Period tends to create a relatively high risk of running evidence that is legally irrelevant, even if commercially compelling.

2) Jurisdiction and decision-maker

• Confirm the matter is to be determined by the Registrar of Trade Marks or a delegate, unless escalated to the Court on appeal.
• Confirm the procedural posture: application for removal, opposition, evidence stages, hearing election.

Risk note: Treating the process like ordinary civil litigation can create a relatively high risk of underestimating the importance of procedural evidence stages and deadlines.

3) Onus and standard of proof

• Confirm who bears the onus. In non-use disputes, section 100 generally places the onus on the registered owner to rebut non-use for each attacked good and service.
• Apply the balance of probabilities standard. The decision-maker must be satisfied it is more probable than not that use occurred, based on properly admissible and persuasive evidence.

Risk note: Over-reliance on broad assertions without dated documents tends to be determined as insufficient, especially where the owner seeks to preserve a broad specification.

4) Defining “use in Australia” and “use as a trade mark”

• Use must be in Australia during the Relevant Period.
• Use must be as a badge of origin, distinguishing the owner’s goods and services in trade.
• “Use in good faith” requires real commercial use rather than token use.

Risk note: Promotional display that is not tied to trade, or not tied to Australia, tends to carry relatively low weight in non-use contests.

5) Matching evidence to the specification

• Itemise the goods and services under challenge.
• For each item, ask: what evidence demonstrates use in Australia in the Relevant Period, in relation to this item?
• Treat broad categories as multiple proof obligations. A single “jewellery” invoice may not prove “financial services”, “software design”, or “material treatment”.

Risk note: Broad specifications tend to create a relatively high risk of partial removal unless the owner has conducted disciplined evidence mapping.

6) Evidence sufficiency and documentary dating discipline

• Prefer dated invoices, receipts, purchase orders, shipping documents, and third-party confirmations.
• If relying on photographs, preserve metadata, printer invoices, distribution logs, or contemporaneous communications that fix dates.
• If relying on social media, capture platform timestamps and tie the account to Australian trade context.

Risk note: Undated materials tend to be determined as low weight, which can be fatal when the remaining evidence is thin.

7) Internet use: Australia-targeting and transactional connection

• Website evidence should establish that the online use was directed or targeted to Australian consumers.
• Helpful indicators may include Australian customer order evidence, geo-targeted campaigns, Australia-specific pages, Australia shipping and returns, and Australian customer engagement records.

Risk note: A global website without Australia-targeting tends to be treated as insufficient for “use in Australia”.

8) Obstacles to use

• If the owner cannot prove use, consider whether there were circumstances that were an obstacle to use during the Relevant Period.
• Obstacles should be proved with evidence, not merely asserted, and they should be connected to the inability to use in Australia for the specific goods and services.

Risk note: Claiming obstacles without documentary support tends to be determined as unpersuasive.

9) Discretion to retain despite non-use

• If non-use is established, address the discretionary stage under section 101.
• Prepare evidence and submissions that explain why non-removal is reasonable, including factors such as residual reputation, post-period use, and the relationship between used and unused categories.
• Confront the public interest in Register integrity and explain why retention is nevertheless reasonable.

Risk note: Discretion requires positive satisfaction and tends to be difficult to obtain without a carefully evidenced discretionary case.

3. Equitable Remedies and Alternative Claims

[Execution Instruction]: Analyse feasible alternative paths when statutory avenues are exhausted. This section is highly detailed and uses non-absolute language.

In trade mark disputes, where a party’s statutory position is weakened by non-use outcomes or specification narrowing, alternative causes and strategies can include:

A) Australian Consumer Law, section 18 misleading or deceptive conduct

• If marketplace conduct creates confusion about trade origin, section 18 can sometimes provide a parallel remedy in trade or commerce.
• The claimant would need to show conduct that is misleading or deceptive or likely to mislead or deceive, in the Australian context, and link that conduct to consumer confusion or market harm.

Risk note: ACL claims tend to require careful evidence of Australian consumer perception and the specific impugned conduct; they are not automatic substitutes for trade mark rights.

B) Passing off

• Passing off can be available where a party can establish reputation, misrepresentation, and damage.
• Reputation must be in Australia and tied to the relevant sign.
• Misrepresentation is assessed by reference to consumer confusion.

Risk note: Passing off tends to be evidence-intensive and may be less predictable if Australian reputation is contested or geographically limited.

C) Injurious falsehood and related economic torts

• In rare circumstances, where false statements about trade origin or business identity are made, economic torts may be considered.
• These claims require proof of falsity, malice or improper purpose in some formulations, and actual loss.

Risk note: Such claims tend to be complex and relatively high risk without strong evidence.

D) Contractual and licensing strategies

• If a party’s registration is narrowed, it may still protect core goods and services through licensing, coexistence agreements, or marketplace undertakings.
• Agreements can control use, presentation, territories, and dispute resolution mechanisms.

Risk note: Commercial agreements can reduce litigation risk but tend to require realistic bargaining positions and careful drafting.

E) Procedural fairness in administrative decision-making

• If a party believes procedural fairness was denied, judicial review may be considered depending on the decision pathway and review rights.
• Grounds typically focus on denial of hearing opportunities, apprehended bias, or failure to consider relevant matters.

Risk note: Judicial review focuses on legality rather than merits and tends to be unsuitable for merely re-arguing evidence weight.

4. Access Thresholds and Exceptional Circumstances

[Execution Instruction]: Reveal the hard thresholds and exceptional exemptions, using non-absolute language.

######Regular Thresholds

1) Relevant Period threshold
– For section 92(4)(b), the key threshold is the three-year continuous period ending one month before the non-use application filing date.

2) Use threshold
– The owner must show use in Australia during the Relevant Period, as a trade mark, in good faith, in relation to the challenged goods and services.

3) Evidence threshold
– Evidence tends to be expected to be objectively dated, with high provenance, and capable of being mapped to the specification.

######Exceptional Channels (Crucial)

1) Single bona fide use, if convincingly proved
– A single act of genuine commercial use may be sufficient, but tends to be assessed strictly where it is the sole act relied upon.

2) Obstacles to use
– If there were circumstances that were an obstacle to use during the Relevant Period, the owner may be able to rely on them, but only if they are proved and closely connected to the goods and services concerned.

3) Discretion not to remove
– Even where non-use is established, discretion may be exercised if it is reasonable not to remove, but this tends to require a strong, evidence-backed case and a persuasive explanation for why Register integrity should yield.

Suggestion: Do not abandon a potential claim simply because your evidence feels thin at first glance. Conduct a disciplined evidence audit, identify what can be independently dated and linked to Australia, and consider whether a narrower but defensible specification is strategically better than a broad but vulnerable one.

5. Guidelines for Judicial and Legal Citation

######Citation Angle

It is recommended to cite this case in legal submissions or debates involving:

• The evidentiary weight of undated promotional materials in non-use proceedings.
• The requirement for Australia-targeting when relying on internet use to prove “use in Australia”.
• The approach to discretion under section 101, especially the need for positive satisfaction and the weight of Register integrity.

######Citation Method

As Positive Support
– When your matter involves reliance on invoices, dated sales records, and timestamped Australian-facing materials, citing this authority can strengthen an argument that the evidence is sufficient for “use in good faith” in Australia during the Relevant Period.

######As a Distinguishing Reference
– If the opposing party cites this case to attack your internet evidence or promotional materials, you should emphasise the uniqueness of your matter by pointing to strong Australia-targeting indicators, clear transaction pathways to Australian consumers, and independently verifiable dating and distribution records.

Anonymisation Rule
– When describing the dispute in submissions or commentary, do not use the real names of the parties; strictly use procedural titles such as Applicant and Opponent.

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Conclusion

This decision shows that trade mark strength in Australia is not measured by how wide the specification looks on paper, but by how convincingly the owner can prove real Australian use within the statutory time window, category by category. When evidence is dated, local, and commercially grounded, even limited use can protect core rights; when evidence is vague, undated, or not Australia-targeted, the Register is likely to be corrected.

Golden Sentence: 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.

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Disclaimer

This article is based on the study and analysis of the public judgment of the Federal Circuit and Family Court of Australia (2025 ATMO 219), aimed at promoting legal research and public understanding. The citation of relevant judgment content 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 the 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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