Ruling finds evidence of use of intellectual property in Australia in relevant period
In connection with a registered trademark relating to investment and brokerage services, Australia’s Federal Court deemed it appropriate in the circumstances to issue orders reversing, without determining the appeal’s merits, a decision to remove a trade mark from the register.
In ETO Group Pty Ltd v ETO Gruppe Technologies GmbH, [2025] FCA 1253, the appellant operated a foreign exchange and contracts for difference online trading platform and owned a trade mark, registered in class 36 relating to financial services on 27 March 2015.
On 29 August 2023, the respondent applied to the registrar of trade marks to remove the trade mark from the trade marks register under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth).
According to the evidence, the appellant has used its “ETO” brand since 2015. It claimed to consistently operate under the corporate name “ETO Group Pty Ltd”; the business name “ETO Markets”, registered on 10 November 2017; and the underlying “ETO” brand identity through the trade mark and two additional variations.
On 11 February 2025, the registrar’s delegate found that the register should remove the trade mark registration. The appellant appealed from the delegate’s decision.
The respondent filed a submitting notice, indicating that it did not intend to challenge the appeal and the relief the appellant requested. The registrar did not appear in the proceeding.
The Federal Court of Australia allowed the appeal, set aside the decision of the delegate of the registrar of trade marks, and dismissed the respondent’s application to remove the trade mark from the register of trade marks.
The court made orders reversing the delegate’s decision without determining the appeal’s merits for the following reasons.
First, the court said the respondent needed to initiate and prosecute the non-use application as the moving party, no longer planned to prosecute this application, and did not contest the issuance of the orders the appellant sought.
Second, the court pointed out that the registrar did not seek to intervene in the appeal.
Third, the court noted that the fact that the delegate found non-use in Australia during the non-use period and refused to exercise the statutory discretion to decline to remove the trade mark did not bar the court from allowing the appeal.
Fourth, the court saw evidence of the trade mark’s use in Australia in the relevant period and held that the appellant explained its evidence.
