Defending a Class 36 trademark against a Fortune-500 multinational
In 2015 a Fortune-500 global corporate filed a removal-for-non-use application against our long-term client's Class 36 Australian trademark INVESTOR VIEW (TM 812479). We coordinated the opposition-to-removal within the statutory timeframes. The applicant withdrew; the mark was retained, renewed and later commercialised through further assignments.
Challenge
On 7 April 2015 a Fortune-500 US-headquartered multinational filed an application under section 92 of the Trade Marks Act 1995 (Cth) to remove the registered Australian mark INVESTOR VIEW (TM 812479, Class 36) for non-use.
The mark had been registered since 16 June 2000 (filed 3 November 1999) and covered financial information and management services, financial analysis, and on-line financial information and management services. If the removal application proceeded unopposed, a 15-year-old Class 36 registration would have been extinguished, along with the commercial position it underpinned.
The deadlines were tight. Under the regulations, the registered owner had one month from publication to file a Notice of Intention to Oppose Removal, and a further month to file the Statement of Grounds and Particulars — after which evidence in support of use had to be prepared to a standard capable of withstanding scrutiny from a well-resourced Fortune-500 opponent.
Approach
Acting for MyMoney Pty Ltd as the registered owner, we mapped out the opposition timetable on day one and coordinated with the trademark attorneys on the formal filings.
The Notice of Intention to Oppose Removal was filed on 22 April 2015 — fifteen days after the removal application. The Statement of Grounds and Particulars was filed on 11 May 2015, inside the statutory window and setting out the grounds on which the registration would be defended. The applicant filed a Notice of Intention to Defend on 19 May 2015, and the evidence-in-support window was booked in for 4 September 2015.
In parallel we assembled the commercial record demonstrating genuine use of the mark within the three-year non-use period — invoices, promotional material, dated online references and financial-services deliverables that tied the INVESTOR VIEW mark to live Class 36 services in Australia. The file was kept audit-ready on the owner’s side at every step so that, if the matter escalated to a hearing, the evidence pack could be lodged without delay.
Outcome
On 4 November 2015 the applicant withdrew the removal-for-non-use application. The Non-use Removal Request Withdrawn correspondence was issued by IP Australia on 9 November 2015 and the withdrawal was published on the register on 12 November 2015.
The INVESTOR VIEW registration was retained in full, without amendment to the Class 36 specification. The mark has since been renewed (renewal due 3 November 2029) and has supported further commercial activity, including two subsequent assignments recorded on the public register — on 8 May 2019 to Investorview International Pte Ltd (Singapore), and on 5 June 2025 to Local Knowledge Property Group Pty Ltd.
For the client, the defence preserved 16 years of invested brand equity in a Class 36 position against a Fortune-500 multinational. For the practice, it evidences the ability to lead a defensive opposition to conclusion — from tactical filings within statutory deadlines, to coordinating with trademark attorneys, to structuring the evidence of genuine use that underpins the outcome.
Public references
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