Federal Court of Australia

ETO Group Pty Ltd v ETO Gruppe Technologies GmbH [2025] FCA 1253

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be allowed.

2.    The decision of the delegate of the Registrar of Trade Marks given on 11 February 2025 in ETORO GROUP PTY LTD v ETO GRUPPE TECHNOLOGIES GmbH [2025] ATMO 30 be set aside.

3.    The application for removal of trade mark registered no. 1683956 from the Register of Trade Marks made by the respondent pursuant to subs 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) on 29 August 2023 is dismissed.

4.    If the parties are unable to reach agreement on the question of costs of the proceeding before the delegate of the Registrar and of this appeal:

(a)    the appellant is to file written submissions in relation to costs, not exceeding three pages in length, on or before 29 October 2025; and

(b)    the respondent is to file written submissions in relation to costs, not exceeding three pages in length, on or before 12 November 2025,

unless a party requests an oral hearing, questions of costs will be determined on the papers.

5.    On or before 17 October 2025 the appellant is to provide a copy of these Orders to the Registrar and to the respondent.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

MARKOVIC J:

1    On 29 August 2023 ETO Gruppe Technologies GmbH filed an application with the Registrar of Trade Marks under subs 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (TM Act) for removal of the following trade mark with registered no. 1683956, at the time owned by ETORO Group Pty Ltd (now ETO Group Pty Ltd), from the Register of Trade Marks:

(Trade Mark).

2    The Trade Mark is registered in class 36 in respect of financial services being “investment and brokerage services”. It has been registered since 27 March 2015.

3    On 11 February 2025 a delegate of the Registrar determined that the registration of the Trade Mark should be removed from the Register (Delegate’s Decision).

4    ETO Group now appeals from the Delegate’s Decision. The respondent to the appeal, ETO Gruppe Technologies, has filed a submitting notice and submits to any order that the Court may make in the proceeding, wishing only to be heard on the question of costs. On 5 March 2025 the Registrar acknowledged receipt of the notice of appeal filed by ETO Group and was subsequently informed that ETO Gruppe Technologies did not intend to contest the proceeding. Neither ETO Gruppe Technologies or the Registrar appeared at the hearing.

legislative framework

5    Section 92(1) of the TM Act permits a person to apply to the Registrar for removal of a trade mark that is or may be registered. Section 92(4) sets out the grounds on which such an application can be made. It provides:

An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)    that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)    to use the trade mark in Australia; or

(ii)    to authorise the use of the trade mark in Australia; or

(iii)    to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)    has not used the trade mark in Australia; or

(v)    has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(b)    that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)    used the trade mark in Australia; or

(ii)    used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note 1:     For file and month see section 6.

Note 2:     If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

Note 3:     For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.

6    Section 100 of the TM Act provides that in any proceedings relating to an opposed application, it is for the opponent (i.e. the trade mark owner) to rebut any allegation made under s 92(4)(a) or s 92(4)(b).

7    Section 101 of the TM Act provides:

(1)    Subject to subsection (3) and to section 102, if:

(a)    the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b)    the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2)    Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(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:

(a)    similar goods or closely related services; or

(b)    similar services or closely related goods;

to those to which the application relates.

(Notes omitted.)

8    Section 104 of the TM Act provides that an appeal lies to this Court, or the Federal Circuit and Family Court of Australia from a decision of the Registrar under s 101 or s 102.

background

9    ETO Group was incorporated on 14 February 2012 under its former name, ETORO Group Pty Ltd. It changed its name to ETO Group on 11 August 2015.

10    ETO Group has held an Australian Financial Services Licence since 1 February 2013. It operates a foreign exchange and contracts for difference online trading platform, providing its services to wholesale and retail clients.

11    Jonathan Barratt, a director, Responsible Manager and Key Person, a role imposed by the Australian Securities and Investments Commission, of ETO Group, gives evidence about the use of the Trade Mark. In summary he says that ETO Group has used the ETO brand since 2015 and that he saw ETO Group consistently operate under:

(1)    the corporate name “ETO Group Pty Ltd”;

(2)    the business name “ETO Markets”, registered on 10 November 2017; and

(3)    underlying “ETO” brand identity across the Trade Mark and two additional variations of the Trade Mark, which are not presently registered.

12    Since 2017 ETO Group has used the Trade Mark in its business dealings with wholesale clients. It uses the variations of the Trade Mark (referred to as the Red Coloured Trade Marks) in its dealing with general retail clients.

13    It is not necessary to set out Mr Barratt’s evidence about ETO Group’s use of the ETO brand, save to observe that it includes use on promotional banners, email signatures, promotional items, business cards, ETO Group’s trading platform, promotional merchandise, ETO Group’s Product Disclosure Statement, Financial Services Guide and Target Market Determination, client agreements and policy documents. The Trade Mark itself has been used on promotional merchandise such as pens and notebooks, client agreements for wholesale clients and in dealings with vendors.

14    According to Mr Barratt the “ETO” brand has become the primary identifier and market identity associated with ETO Group’s financial services business, while the underlying “ETO” brand (protected by the Trade Mark) remains the foundation of ETO Group’s market identity.

consideration

15    The present appeal is brought pursuant to s 104 of the TM Act. It is a hearing de novo. The Court stands in the shoes of the Registrar to consider afresh whether the non-use application should be allowed: Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 at [3] (Thawley J).

16    Hungry Spirit Pty Limited atf The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883 was an appeal from a decision of a delegate of the Registrar refusing to remove the trade mark in question from the Register for non-use but directing that the trade mark’s specification of goods and services for classes in which it was registered be amended. Before the delegate the respondent, Fit n Fast, sought that the trade mark be removed for non-use and the appellant, Hungry Spirit, opposed the application. Prior to the first case management hearing the appeal settled and the parties asked the Court to make consent orders providing that the appeal be allowed, the delegate’s decision be set aside and that the Registrar allow the trade mark to remain registered for all goods and services originally covered by the registration.

17    Justice Burley considered whether the Court could make the orders sought by the parties by consent and without a hearing on the merits. His Honour observed (at [5]-[6]) that while the Court had proceeded in that way in the circumstances of an appeal brought pursuant to s 56 of the TM Act concerning acceptance and registration of trade marks, the legislative scheme for the removal of trade marks for non-use is different. After setting out the legislative scheme, his Honour said at [12]-[16]:

12    Despite the obvious differences between the operation of Part 5, Division 2 of the Act (concerning opposition to the registration of a trade mark application), and Part 9 (concerning non-use), in my view it is appropriate in the present case to make orders reversing the decision of the delegate, even though I have conducted no hearing of the appeal on its merits.

13    As a hearing de novo, the Court considers the application for removal brought pursuant to s 92 afresh. The use of the word “appeal” in s 56 and in s 104 does not confer appellate jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the delegate as an executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213; 141 FCR 1; 62 IPR 510 at [44] (Kiefel, Allsop (as their Honours then were) and Crennan JJ); Woolworths Ltd v BP PLC (No 2) [2006] FCAFC 132; 154 FLR 97; 235 ALR 698; 70 IPR 25 at [137] (Heerey, Allsop (as his Honour then was) and Young JJ); Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 (Burley J at [228], Greenwood J agreeing generally at [18]).

14    The Act and Regulations make clear that it is the applicant for removal that remains the moving party, despite the fact the appeal was initiated by Hungry Spirit and despite the reversal of onus effected by s 100. In this regard it is significant that the applicant is obliged to file a notice of intention to defend. If it does not do so, then the opposition may be taken to have succeeded and the removal application will fail. Whilst Hungry Spirit was obliged to file a notice of appeal in this Court, because it did not succeed before the delegate, the substantive moving party in the proceeding remained Fit n Fast, as the applicant for removal.

15    Further, s 101(1) requires the Registrar to be satisfied that the grounds upon which the non-use application was made have been established. Accordingly, despite the reversal of onus, ultimately it is for the applicant for removal to persuade the Registrar of the appropriateness of any order made.

16    In these circumstances, it is apparent that despite the different scheme set out in the Act and Regulations, the application for non-use must be initiated and prosecuted by the non-use applicant. The position is analogous to that which I considered in Hungry Spirit 1.

18    In Thomas v Monsoon Group Pty Ltd [2025] FCA 911 Hespe J allowed an appeal from a decision of a delegate of the Registrar in similar circumstances to those before me. The applicant in that case sought an extension of time in which to file a notice of appeal from the delegate’s decision. On the application by the respondent pursuant to s 92 of the TM Act, the delegate had directed the removal of the applicant’s mark from the Register. By the time of the hearing of the application for an extension of time, the respondent had filed a submitting notice and the Registrar was made aware of the application, the grounds of appeal and the fact that the respondent had filed a submitting notice. Neither of those parties appeared at the hearing.

19    Justice Hespe observed at [13], after referring to Hungry Spirit at [8]-[11] and [14]-[17], that although the parties before her Honour did not seek an order by consent, the effect of the submitting notice was that the respondent did not contest the relief sought by the applicant and put forward no evidence or argument as to non-use or exercise of the discretion under s 101(3) of the TM Act. On that basis, her Honour was of the view that the approach adopted in Hungry Spirit applied equally to the case before her. At [14] Hespe J observed:

In Hungry Spirit, Burley J considered it appropriate to make orders reversing the decision of the delegate without determining the merits of the appeal. Nonetheless, his Honour examined the reasons given by the delegate to be satisfied that there was “no self-evident reason” why the orders should not be made. The Court understands the phrase “no self-evident reason” to be a reference to a clear determinative matter of fact or law which would preclude the making of orders reversing the decision of the delegate.

20    As set out above, ETO Gruppe Technologies has filed a submitting notice. By doing so it has indicated that it does not wish to contest the appeal and thus the relief sought by ETO Group. The Registrar, having been notified of the appeal and ETO Gruppe Technologies’ position, has not appeared. Notwithstanding that ETO Group is the appellant and brings the appeal, ETO Gruppe Technologies remains the moving party on the appeal but, given its position, it has not filed any evidence: see Hungry Spirit at [14].

21    In those circumstances orders can be made reversing the delegate’s decision without determining the merits of the appeal. I am satisfied that it is appropriate to do so in the present case and that there is no self evident reason why such orders should not be made for at least the following reasons:

(1)    as I have already observed, ETO Gruppe Technologies, who remains the moving party and is therefore required to initiate and prosecute the application for non-use, no longer wishes to prosecute its application for non-use and does not contest the making of the orders sought. The effect of those orders will be to set aside the Delegate’s Decision;

(2)    the Registrar has not sought to intervene in the appeal;

(3)    as was the case in Thomas, the fact that the delegate found that the Trade Mark was not used in Australia during the non-use period, and declined to exercise the statutory discretion not to remove the Trade Mark, is not a bar to the court allowing the appeal: see Thomas at [19] referring to Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited [2025] FCA 428 at [21] (O’Callaghan J); and

(4)    in any event there was evidence of use of the Trade Mark in Australia in the relevant period and, to the extent that there was such evidence, it was explained by ETO Group.

conclusion

22    It follows from the above that the appeal should be allowed, the Delegate’s Decision should be set aside and the application for removal of the Trade Mark from the Register made pursuant to subs 92(4)(a) and (b) of the TM Act on 29 August 2023 should be dismissed.

23    ETO Group seeks its costs of this appeal and the proceeding before the delegate. However, ETO Gruppe Technologies submitted to any order on the appeal other than in relation to costs. Accordingly, I will reserve on the question of costs and, in the absence of an agreement on that issue, I will make orders requiring the parties to exchange written submissions on costs. Unless a party seeks an oral hearing, I will determine the question of costs on the papers.

24    ETO Group will be required to provide a copy of the Court’s Orders to the Registrar and to ETO Gruppe Technologies.

25    I will make orders accordingly.

Associate:

Dated:    15 October 2025